December 31, 2014

New Petitions (3)

Zhuhai Seine Technology Co., Ltd. filed IPR2015-00508 challenging U.S. Patent No: 8,688,008.

Apotex, Inc. filed  IPR2015-00518 challenging U.S. Patent No: 8,324,283.

Micron Technology, Inc. filed IPR2015-00519 challenging U.S. Patent No. 5,839,108.

Dispositions (3)

In Groupon, Inc. v. Online News Link LLC, IPR2014-01326,   IPR2014-01327,   IPR2014-01328,  (December 31, 2014), the Board terminated the inter partes reviews on the joint motion of the parties.

Federal Circuit Approves Placing Burden on Patent Owner to Show Patentability Over Prior Art Cited in Original Prosecution History

In Prolitec, Inc. v. Scentair Technologies, Inc., [2015-1020] (December 4, 2015), the Federal Circuit affirmed the PTAB’s decision that claims of U.S. Patent No. 7,712,683 were unpatentable as anticipated under 35 U.S.C. §102 alone and as obvious under 35 U.S.C. §103, and denying the patent owner’s motion to amend.

Prolitic argued that the PTAB construed the term “mounted” and “fixed in position” too broadly, arguing with the support of export testimony that the claims should be limited to the preferred embodiments which showed a single use device.  The Federal Circuit rejected these arguments, noting that the description specifically contemplated reusable devices as well.  The Federal Circuit rejected Prolitic’s expert’s testimony that the invention related to single use devices with a permanent mounting, noting that an expert  “cannot rewrite the intrinsic record of the . . .patent to narrow the scope of the patent, saying Phillips instructs that a court should discount any expert testimony ‘that is clearly at odds with the written record of the patent.

Prolitic also appealed the PTAB’s denial of its motion to amend the claims to comport with its proffered constructions.  Prolitec initially argued that it was improper for the Board to place the burden on the patentee to show patentability of the proposed claim amendments, but the Federal Circuit  disposed of this argument in Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). Prolitec then tried to argue that it did not have the burden to establish patentability over prior art references cited in the patent’s original prosecution history because they are not prior art of record in the IPR.  The Federal Circuit noted that the in MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB July 15, 2015), the Board stated, that “prior art of record” includes “any material art in the prosecution history of the patent.”  The Federal Circuit found this construction reasonable:

We conclude that the PTO’s approach is a reasonable one at least in a case, like this one, in which the Board’s denial of the motion to amend rested on a merits assessment of the entire record developed on the motion, no just on the initial motion itself. The Board’s position—that the patentee’s burden on a motion to amend includes the burden to show patentability over prior art from the patent’s original prosecution history—is not in conflict with any statute or regulation. Moreover, it is not unreasonable to require the patentee to meet this burden.

The Federal Circuit discerned no reversible error in the Board’s denial of Prolitec’s motion to amend.





Institution Decisions September 21- 27, 2015

In Cree, Inc.v.Honeywell International Inc., IPR2015-00914 (PTAB September 24, 2015), the Board instituted inter partes review of claims 28, 33 – 35, 37, 40 – 44, 46, and 49 – 51, of U.S. Patent No. 6,373,188 but not challenged claims 36 and 45 — 87.5% of the challenged claims.

In Sophos Inc. v. Finjan, Inc., IPR2015-01022 (PTAB September 24, 2015) the Board denied inter partes review of claims 1, 10, 14, and 18 of U.S. Patent No. 8,677,494.


The Reason For Bringing a Meritorious Petition for Inter Partes Review is Irrelevant; No Sanctions Against Hedge Fund Front

In Coalition for Affordable Drugs VI, LLC v. Celgene Corp., IPR2015-01092, Paper 19 (Septe,ber 25, 2015), the Board denied the patent owner’s motion for sanctions against Petitioner, who it accused of filing the Petition to manipulate patent owner’s stock price.

The Board first addressed patent owners complaint that petitioner was motivated by profit, noting:

Profit is at the heart of nearly every patent and nearly every inter partes review. As such, an economic motive for challenging a patent claim does not itself raise abuse of process issues. We take no position on the merits of short-selling as an investment strategy other than it is legal, and regulated.

The Board next addressed patent owner’s complaint that petitioner had no competitive interest.  The Board contrasted inter partes review, which be be instituted by any person who is not the owner of the patent, with covered business method review which require a party or privy to have been sued or charged with infringement of the patent, and held that Congress did not limit inter partes reviews to parties having a specific competitive interest in the technology covered by the patents.

The Board then address the purpose of the America Invents Act, rejecting the patent owner’s arguments.  The Board said:

The purpose of the AIA was not limited to just providing a less costly alternative to litigation. Rather, the AIA sought to establish a more efficient and streamlined patent system that improved patent quality, while at the same time limiting unnecessary and counterproductive litigation costs. The AIA was designed to encourage the filing of meritorious patentability challenges, by any person who is not the patent owner, in an effort to further improve patent quality.

Noting that that patent owner did not allege that the Petitioner filed a non-meritorious patentability challenge, the Board denied the motion for sanctions


Rehearing . . . Granted?

In Handi Quilter, Inc. v. Bernina International AG, IPR2014-00270, Paper 17 (December 31, 2014), the Board granted petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review. Although it is not clear from the Board’s opinion, petitioner contended that the Board overlooked or misapprehended an important point presented in the Petition regarding why a person of ordinary skill in the art at the time of the alleged invention would have been motivated to combine the teachings.  The Board made a thorough examination of whether a person of ordinary skill in the art would have a reason to combine the references.  The Board noted that:

The Supreme Court counsels that often it will be necessary to look to (1) interrelated teachings of multiple patents, (2) the effects of demands known to the design community or present in the marketplace, and (3) the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent. KSR, 550 U.S. at 418.

The Board found that there was an articulated reason to support a conclusion of obviousness, and observed that the patent appears to take away form the prior art the obvious use of a prior art sensor in the prior art environment.  The Board make several analogies, first to Hotchkiss v. Greenwood, 52 U.S. 248 (1851), where the Court held that substitution of clay or porcelain knobs in place of known wood or metal knobs would have been obvious.  The Board said that in the current case, the sensor was known and was known to perform the function required by prior art..

The Board also cited Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 (1945),where the inventor claimed the use of a particular solvent to solve a particular problem.  The characteristics of a solvent needed to solve the inventor’s problem were known. Likewise, solvents having those characteristics were known. While the prior art patents did not describe the use of the inventor’s particular solvent, the Court observed that: “Reading a list and selecting a known compound [i.e., solvent] to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention [i.e., it would have been prima facie obvious].” Sinclair, 325 U.S. at 335.  The Board said that in the current case, the prior art describes the need for a sensor and its characteristics and the prior art reveals that sensor’s having those characteristics were known.

Finally, the Board cited Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945) where the Supreme Court said the mere substitution of equivalents which do substantially the same thing in the same way, even though better results may be produced, is not such an invention as will sustain a patent).

The patent owner argued that a person of ordinary skill in the art would not look to the reference, but the Board said this was undermined by Supreme Court precedent, including Graham v. John Deere Co., 383 U.S. 1, 10 (1966), where the Court, quoted from a letter from Thomas Jefferson to Oliver Evans, observed “A man has a right to use a saw, an axe, a plane separately; may he not combine their uses on the same piece of wood?”  Similarly in Dunbar v. Myers, 94 U.S. 187, 195 (1876), the Court said “Ordinary mechanics know how to use bolts, rivets and screws and it is obvious that anyone knowing how to use such devices would know how to arrange a deflecting plate at one side of a circular saw which had such a device properly arranged on the other side.”  The Board found the parallel between these statements from Graham and Dunbar and the case before it was manifest.  The Board rephrased Jefferson’s question: “Does not a person skilled in the . . .art have a right to use the known sensor? On the record before it, the Board could not see why not.  Noting that if the answer is no, “then one would be suggesting removal from the public domain an obvious use of applicable sensor technology without a quid pro quo (i.e., teaching the public anything not essentially taught by [the prior art].

The Board agreed that it overlooked Petitioner’s argument that prior art itself, even without the support of expert testimony, provides sufficient rationale to show a reasonable likelihood that a person of ordinary skill in the art would have found it obvious to combine the teachings of the two references.









December 30, 2014

New Filings (1)

DePuy Orthopaedics, Inc., filed IRP2015-00510 challenging u.S. Patent No. 8,658,710 on OXIDATION-RESISTANT AND WEAR-RESISTANT POLYETHYLENES FOR HUMAN JOINT REPLACEMENTS AND METHODS FOR MAKING THEM, assigned to Orthopaedic Hospital.

Institution Decisions (3)

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01054, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1, 2, 4, 6, 11–21, 26, 27, and 29 (all the challenged claims) of U.S. Patent No. 6,467,285.

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01058, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1–3, 5, 7, 12–22, 30, and 31 of U.S. Patent No. 6,581,395 (but not as to challenged claim 33).

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01060, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1–3, 5, 7, 12–22, 26, 30, 31, and 33 (all the challenged claims) of U.S. Patent No. 6,688,123.

In GoerTek, Inc. and GoerTek Electronics, Inc. v. KNOWLES ELECTRONICS, LLC, IPR2014-01009, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1, 15, 16, 19, 21–23, 25, and 26 of U.S. Patent 8,018,049.


Dispositions (1)

In Riverbed Technology Inc.v. Silver Peak Systems, Inc., IPR2013-00402, Paper 35 (December 30, 2014), the Board granted patent owners motion to cancel the claims in the proceeding, and to amend by adding substitute claims 13 and 15.






Judicial Review of the Board’s Institution Decisions

35 USC 314(d) seems clear on its face:

(d) NO APPEAL. — The determination by the Director whether to institute a review under this section shall be final and nonappealable.

The Board’s decision whether to institute inter partes review is not reviewable.  However the statute is not enough to keep parties from trying.  In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 Fed 1373, 1375-76 (Fed. Cir. 2014), St. Jude tried to appeal the Board’s decision denying St. Jude’s petition for inter partes review, but the Federal Circuit dismissed the appeal based on the broad bar of 35 USC 314(d).  The Federal Circuit has also held that a decision not to institute is cannot be challenged with a Writ of Mandamus, because  in view of 35 USC 314(d), a disappointed petitioner has no “clear and indisputable” right to relief.  In re Dominion Dealer Solutions, 749 F.3d 1379, 1381 (Fed. Cir. 2014).

The Patent Owner is in no better position, the Federal Circuit denying Writs of Mandamus to patent owners attempting to challenge the Board’s decision to institute inter partes review.  In re Proctor & Gamble, 749 F.3d 1376. 1378-79 (Fed. Cir. 2014); see, also, In re Board of Trustees of the University of Illinois, 564 Fed. Appx. 1021 (Fed. Cir. 2014); In re Versata Development Group, Inc., 564 Fed. Appx. 1024 (Fed. Cir. 2014).  However, the Federal Circuit has expressly left open the possibility that an institution decision might be reviewable incident to the appeal of an final written decision.  In re Proctor & Gamble, 749 F.3d 1376. 1378-79 (Fed. Cir. 2014).

The review of the institution decision incident to the appeal of a Final Written Decision  is before the Federal Circuit in In re Cuozzo Speed Technologies LLC, [14-1301] (Fed. Cir.).  Cuozzo has argued that there are some decisions that should be reviewable, for example if the Board were to institute inter partes review based on §101 grounds (which is not provided for by statute).  Even the Patent Office, which intervened in the appeal, appeared to conceded that the restriction on appeal may be limited to the merits of the decision on patentability.

The Federal Circuit may provide some after-the-fact review for patent owners, but is there really no review of the decision of the Board no matter how contrary to the regulations and statutes?  Practitioners might consider a Petition to the Commissioner under 37 CFR §1.182:

1.182    Questions not specifically provided for.

All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in §1.17(f).

The Commissioner should have the inherent authority to correct a serious error by the Board, although the Commission will likely not get involved in the merits of the preliminary patentability determination.





, because the decision not to institute was not a Final Written Decision,314(d) . olcano that is not enough to keep parties from trying.




December 24, 2014

New Filings

HM Electronics, Inc. filed IPR2015-00491 challenging U.S. Patent No. 8,694,040 on a REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT.

Institution Decisions

In Inspectionlogic Corp. v. LDARtools, Inc., IPR2014-01044, Paper 11 (December 24, 2014), the Board instituted inter partes review of claims 7–16 (all of the challenged claims) of U.S. Patent No. 7,657,384.


Qualcomm Technologies, Inc. v. Progressive Semiconductor Solutions LLC,  IPR2014-01541, Paper 9 (December 24. 2014) the Board  granted the parties’ joint motion to terminate.

In CB Distributors, Inc.  FONTEM HOLDINGS 1 B.V., IPR2013-00387, Paper 43 (December 24, 2014), the Board issued a Final Written Decision that claims 1–10, 12, 15–26, and 33–38 of U.S. Patent No. 8,156,944 were unpatenable, but not challenged claim 11.

Petitioner Authorized to File Sanctions Motion Against Inventor

In Shire Development LLC, LCS Group, LLC, IPR2014-00739, Paper 14 (December 23, 2014), the Board authorized petitioner to file a motion for sanctions after the inventor Dr. Louis Sanfilippo, send an email in violation of the Board’s December 9, 2014, Order prohibiting him from contacting Shire, Shire’s employees, the expert retained by Shire for this proceeding (Dr. Timothy Brewerton), and counsel for Petitioner, except through counsel for Patent Owner or in the presence of counsel for Patent Owner.  The Board agreed with Petitioner and clarified its earlier order:

Dr. Sanfilippo is prohibited from contacting Petitioner, Petitioner’s employees, Petitioner’s expert, Petitioner’s counsel, or anyone associated with Petitioner, in relation to this proceeding. Further, any communication from Patent Owner to Petitioner or Petitioner’s representatives regarding this proceeding must be signed by Patent Owner’s counsel of record. Moreover, Dr. Sanfilippo cannot sign any paper to be filed with the Board in this proceeding, but all papers must be signed by Patent Owner’s counsel of record. We remind counsel that they are subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).

While his conduct is no doubt disruptive, since Dr. Sanfilippo is not a party to the proceeding (the reason he was not allowed to proceed pro se), one wonders what authority the Board has over his actions

More Schooling for Petitioners on Obviousness: Details Needed

In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01027, Paper 16, (December 22, 2014) the Board declined to institute inter partes review of claims 13–20, 25, and 36 (the “challenged claims”) of U.S. Patent No. 6,020,980.  In addressing the merits of the petition the Board quoted the Petition that the references “are clearly properly combinable and are representative of the obvious body of knowledge well within the grasp of the person of ordinary skill in the art in the field of the ’980 Patent.” The Board, observed that “This statement, by itself, does not provide any rationale for combining the cited teachings and certainly does not provide a sufficiently “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” The Board complained that “Petitioner does not explain persuasively how or why a person of ordinary skill would have combined the cited teachings. The Board acknowledged that the Petition was supported by an expert declaration, but said the declaration, like the Petition, “only offers conclusions that it would have been obvious to combine certain teachings from each of the references” and does not provide any support for the conclusions with persuasive explanation or citation to objective evidence.