Board Teaches Patent Owner About Precedent, and Petitioner About Showing Obviousness

Often times the best lessons are those learned at someone else’s expense. One such case is Valeo, Inc.v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014).  The Patent Owner urged the Board to exercise its discretion not to institute inter partes review on a patent already being challenged arguing that the Board has held consistently that a petitioner must explain adequately why a follow-on petition is not redundant.  The Board rejected this argument, instructing the patent owner that “The citation of a single case does not demonstrate what the Board has consistently held.” The Board went on to consider the merits of the Petition, and it was petitioner’s opportunity to be schooled.  The Board found petitioner’s obviousness arguments deficient in three respects: First, Petitioner’s obviousness analysis is incomplete in that it fails to state explicitly the differences between the primary reference and the claimed subject matter, noting that.Graham v. John Deere Co. requires determining the differences between the claims at issue and the prior art.  Second, the Petition simply quotes portions of the references, and does not explain persuasively the relevance of the evidence.  The Board was looking for some explanation of how the quoted language meets the claim limitation.  Third, and finally, the Board complained that Petition failed to explain how the references are combined to reach the claimed subject matter, The Board criticized that petitioner’s conclusory statements were not substitutes for explanation of how the references would be combined.  The Board declined to institute inter partes review of any of the challenged claims.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.