IPR2014-00008, -00011, -00012, and -00013

Introduction: It’s official, folks. We are on to FY2014 petition denials.  Given that today is October 1, 2015, that puts me exactly one fiscal year behind schedule (measured from petition filing date, at least). We kick the fiscal year off with a four-way denial on procedural grounds.

Caption: Samsung Electronics Co. Ltd. v Fractus, S.A.

Patent Nos.: 7,123,208; 7,397,431; 7,394,423; and 7,015,868

Background: Fractus originally sued Samsung on the patents-at-issue by complaint served on May 7, 2009. Having lost that case after a jury trial, Samsung appealed the outcome to the Court of Appeals for the Federal Circuit.  [Disclaimer – I was litigation counsel for Pantech, one of Samsung’s co-defendants in that case. This post is strictly based upon publicly-available information]

While the appeal was pending, Fractus sued Samsung again on products not at issue during the first litigation. That complaint was served on February 28, 2013.  Seeing an opportunity, Samsung filed these four IPR petitions, within one year of the latest service date.

Board Decision Issued on January 2, 2014: The panel includes APJ Bisk, APJ Perry, and APJ Boucher. APJ Perry writes for the panel.

We have covered 35 USC 315(b) on this blog before. Under that statute, Samsung’s IPRs may not be instituted if the petitions are filed more than one year after Samsung “is served with a complaint alleging infringement of the patent[s].” (emphasis added)

Samsung, like other parties before it, argues that IPRs cannot be barred by complaints that were filed before the America Invents Act, effective September 16, 2011.  The reason, says Samsung, is that the statute states “is served” rather than “was served.”  Thus, the legislative intent was not to trigger the one-year deadline from complaints filed pre-AIA.  Alternatively, Samsung argues that the February 28, 2013 complaint is “a complaint” within the meaning of the statute, and therefore permits IPR institution.

Consistent with its prior rulings, the Board is not convinced.  In its view, the statute bars institution of an IPR upon certain conditions, rather than allowing an IPR to be instituted upon certain conditions. In other words, an IPR cannot be instituted just because a complaint has been served within the past year.  Rather, the statute bars institution of an IPR if “a complaint” was served on petitioner more than one year before the filing of the IPR petition.

Result: Petition Denied.

Lessons from IPR2014-00008 et al.:

  1. Parties getting sued for the second time on identical patents may not be able to file an IPR against the patents-in-suit.  Really, there’s not much more to this case than that.
  2. That said, parties in that situation may need to be creative. There are options.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00627

Introduction: I wrote about means-plus-function terms a couple weeks ago, and how the Board is looking for petitioners to not only propose claim constructions, but to propose the correct claim constructions. Here’s a similar case.

Caption: Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.

Patent No.: 8,418,432

Background: The ‘432 patent is directed to a quick connect/disconnect for an agricultural tool called a stalk stomper. It effectively tamps down the stalks left behind after crops are harvested.  Within the challenged claim 1 is the following term: “a retention means on the plate member, whereby, to connect the stalk stomper to the tool bar assembly, the cross bar is engaged in the recesses and the stalk stomper is pivoted so that the plate member is above the pair of holes and the pin can be inserted into the transversely aligned holes to connect the stalk stomper to the tool bar assembly, the pin engaging the retention means so as to prevent longitudinal movement of the stalk stomper with respect to the tool bar assembly in operation to prevent the cross bar from disengaging from the recesses in use.”  The issue, of course, is the construction of “retention means.”

Board Decision Issued on March 17, 2014: The panel includes APJ Bisk, APJ Elluru, and APJ Anderson. APJ Anderson writes for the panel.

On the proper construction of “retention means,” the parties presented the following constructions:

  • Petitioner’s proposal: “mechanism that retains something”;
  • Patent Owner’s proposal: “a structure attached to or formed with the plate that engages a pin to preclude longitudinal movement of the stalk stomper relative to the bracket.”

The Board proceeds with a means-plus-function analysis, first considering the rebuttable presumption of whether 112/6 applies, then determining that the associated function is “retaining something.” See Decision at p. 7.  Ultimately, citing to Fig. 6 of the ‘432 patent, the Board concludes that the corresponding structure is “a retention block or a retention stop in the form of an L-shaped bracket.” Id. at 9.

Moving on to the substantive obviousness challenges, the Board notes that Petition did not propose a construction under 112/6 for “retention means.” As a result, “Petitioner, therefore, does not provide any evidence of how the prior art references should be applied if ‘retention means’ is construed as a means-plus-function term.” Id. Because Petitioner has no evidence based on the proper M+F analysis, “[t]he record is, thus, devoid of evidence on the critical issue of equivalent structure.” Id.

Result: Petition Denied.

Lessons from IPR2013-00627:

  1. Challenging claims that might require construction under 112/6 is a tricky thing. A petitioner’s failure to identify the proper structure of an M+F term is likely to sink the petition.
  2. Watch for cases where improper (non M+F) claim constructions by the petitioner lead to a similar result.  I’m keeping my eyes open.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00626

Introduction: Here’s a case where the proper claim construction means everything.

Caption: Superior Communications, Inc. v. Speculative Product Design, LLC

Patent No.: 8,204,561

Background: The ‘561 patent is directed to a one-piece protective case for a mobile phone. The case includes a flexible inner layer “permanently affixed” to an exterior hard layer.

Interestingly, this ‘561 patent was at issue in a district court case, an ITC investigation, and was the subject of an IPR (IPR2013-00197) brought by another petitioner, Fellowes, Inc.  That IPR was terminated on November 19, 2013 after being instituted.

Board Decision Issued on March 18, 2014: The panel includes APJ Green, APJ Wood, and APJ Floyd. APJ Wood writes for the panel.

Neither party presents specific constructions of the claim terms, and instead relies upon by the plain and ordinary meaning. This is how the -00197 case proceeded.

However, in this instance, the Board sees fit to construe “permanently affixed” such that separating the inner flexible layer and hard outer layer of the case would damage either the layers or the bond between the layers.

In the primary Seo reference, the mobile phone case includes a soft silicone part that is made “via double injection molding” on the exterior portion of the case.  Patent Owner argues that this creates a mechanical attachment between layers.  Providing its own analysis to the issue, the Board is not persuaded that Seo’s mechanical attachment method results in the two layers being “permanently affixed” according to the Board’s construction of that phrase.

Result: Petition Denied.

Lessons from IPR2013-00626:

  1. In this case, the Board construed “permanently affixed” based in great part upon the definition provided in Merriam-Webster’s Collegiate Dictionary (2005). In the -00197 case, there was no construction of this term (see Decision at pp. 5-6), and in this case, the parties did not present a construction aside from plain & ordinary meaning. And yet, the Board reached a construction that was dispositive to the petition’s outcome.
  2. Interestingly, the panels on the -00197 and -00626 cases differed by only one person. The -00197 case included as a third person APJ Boalick, then Acting Vice Chief Administrative Patent Judge.  APJ Floyd was not on the -00197 case.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00606

Introduction: This is it, folks.  The heavy-duty real party in interest case you’ve been waiting for.

Caption: ZOLL Lifecor Corporation v. Philips Electronics North America Corp. and Koninklijke Philips Electronics N.V.

Patent No.: 5,593,427

Background: Petitioner is a wholly-owned subsidiary of ZOLL Medical. ZOLL Medical was not named among the real parties in interest (RPIs) in the Petition. At the time of the Board’s decision discussed below, Petitioner was being sued in Pennsylvania, and ZOLL Medical was being sued in Massachusetts.

Under 35 USC 312(a), a petition must identify all real parties in interest. Where a petition does not do so, the Board may provide a petitioner with a one-month time frame to correct the defective petition, per 37 CFR 42.106(a). But the case cannot proceed without identifying the correct RPIs.  The Board explains that this disclosure is required so the Board can check for conflicts of interest, and also evaluate whether the petition is time-barred under 35 USC 315(a)(1) or whether an RPI is estopped from requesting review under 35 USC 315(e).

Board Decision Issued on March 20, 2014: The panel includes APJ Medley, APJ Quinn, and APJ Anderson. APJ Quinn writes for the panel.

The Board explains that the determination of an RPI involves the consideration of “control.” Based on the totality of the circumstances, the “evidence as a whole must show that the non-party possessed effective control from a practical standpoint.” See Decision at 9.  For simplicity, I’m going to bullet the points for and against a determination that ZOLL Medical is an RPI.

Facts and arguments in favor of (per the Board’s ruling):

  • ZOLL Medical controls 100% of Petitioner and authorizes its budget and plans.
  • Unified actions taken by Petitioner and ZOLL Medical in the “multi-state patent war” with Patent Owner
  • The absence of Petitioner’s management team and presence of ZOLL Medical’s management team at the court-ordered mediation in the Pennsylvania Action
  • Petitioner argued for a stay in district court on the basis that the parties (i.e. both ZOLL Medical and Petitioner) would be busy with the ZOLL Medical trial
  • Petitioner’s Secretary, Mr. Grossman, provides legal guidance for both ZOLL Medical and Petitioner
  • The Petition relies upon a declaration from the same expert used by ZOLL Medical in the Mass. action

Facts and arguments Against (per the Board’s ruling):

  • The patents-at-issue in the Mass. and Penn. actions are not 100% overlapping, and the Petitioner and ZOLL Medical are not co-defendants in either case
  • Petitioner is paying for and supervising the inter partes reviews and district court litigation without compensation from ZOLL Medical
  • Petitioner has full control over its hiring, even though Petitioner and ZOLL Medical share the Career website
  • Petitioner was represented at settlement by Mr. Grossman, its Secretary, who provides legal guidance for both companies;
  • the use of common counsel is not evidence of control
  • the use of “we” in an SEC filing [referring to both Petitioner and ZOLL Medical] is not evidence of control
  • Petitioner’s facility is subject to an obligation to, but not under the control of ZOLL Medical

Given this record, the Board’s ruling is as follows:

After considering the evidence presented by Petitioner and Patent Owner we are persuaded by the evidence presented that ZOLL Medical is a real party-in-interest … because it “‘has the actual measure of control or opportunity to control that might reasonably be expected between two formal coparties.’” 77 Fed. Reg. at 48,759 (quoting Wright & Miller § 4451). We are persuaded that the evidence presented by Patent Owner shows sufficiently that ZOLL Medical and Petitioner have a very close parent and wholly-owned subsidiary relationship with aligned interests and sufficient opportunity for ZOLL Medical to control the challenge to the patentability of the patent-at-issue in the instant petition.

See Decision at 9-10 (underlining added). The Board also looks to the evidence not presented by Petitioner in rebuffing the attack:

 What Petitioner does not state affirmatively also is telling—that neither Mr. Grossman, who by admission provides legal counsel for both ZOLL Medical and Petitioner, nor legal counsel for ZOLL Medical provided input into the preparation of the IPRs filed by Petitioner.

See Decision at 10.  In other words, Petitioner made no representation about whether Mr. Grossman or ZOLL Medical’s counsel had input into the IPRs filed by Petitioner. The Board would have liked to see independence by Petitioner in this regard.

One other point about this case is that the Board normally grants one month to correct an improper petition. But here, the Board decides that this is not needed since the one-month period would fall outside the one-year bar period under 35 USC 315(b).

Result: Petition Denied.

Lessons from IPR2013-00606:

  1. What’s interesting to me is that the Board is willing to consider not only actual control, but the opportunity to control. This can be present in many ways, whether the petitioner and non-party are actually affiliated. Hopefully we see this issue developed further by the Board in later cases.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00572, -00573

Introduction: I had planned to write about IPR2013-00591, but it turns out that -00591 was denied on substantially the same grounds as -00583 (our last post). So I will fall back and pick up two Samsung cases that I missed while moving through the -00500s. Today we have two denials out of six IPRs filed on the same day by Samsung against Virginia Innovation Sciences, Inc.  Next we move in to the -00600s, and find ourselves nearly at the end of FY2013.  From the look of it, FY2014 will take us much longer to work through…

Caption: Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.

Patent Nos.: 7,899,492 and 8,050,711

Background: The patents at issue relate to reception of display signals by a mobile terminal, and the transmission of those signals to an external Mobile terminal signal conversion module (MTSCM) and then an external display system for proper viewing.  Here is claim 23 from the ‘492 patent, directed to the MTSCM:

23. An apparatus for processing signals to accommodate reproduction by an alternative display terminal, the apparatus comprising:

an interface module, which receives a video signal appropriate for displaying a video content on a mobile terminal, the video signal being received from a cellular network communication that is sent to the mobile terminal and then received by the interface module;

a signal conversion module, in operative communication with the interface module, which processes the video signal to produce a converted signal for use by the alternative display terminal, wherein processing by the signal conversion module includes converting the video signal from a compression format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the compression format, such that the converted video signal comprises a display format and a power level appropriate for driving the alternative display terminal; and

a device interface module, in operative communication with the signal conversion module, which provides the converted video signal to the alternative display terminal to accommodate displaying the video content by the alternative display terminal.*

*[bolded terms were construed by the Board; underlined phrase is essential to the Board’s decision]

Board Decisions Issued on March 6, 2014: The panel includes APJ Kim, APJ McNamara, and APJ Clements. APJ Clements writes for the panel in both cases.

The Board construes “display terminal” and “cellular network communication” in a manner you might expect. In the -00572 case, the Board also construes “power level” specifically as “signal power level.”  These constructions aren’t particularly relevant to the denial.

Moving to the substantive analysis, the Board evaluates the Palin reference and the Petitioner’s anticipation arguments based on Palin. In Palin, a mobile device receives video information from a base station. The video information includes a portion of a packet dedicated for mobile phone display (the mobile phone part 54), and a portion dedicated for a TV receiver (TV receiver part 56). The TV receiver part 56 is split off and forwarded by the mobile device to an external TV.  The external TV is connected to the mobile phone via a wireless connection (e.g. Bluetooth).

Petitioner argues that Palin’s repackaging of the TV receiver part 56 into a Bluetooth packet is sufficient to constitute the necessary “converting the video signal from a compression format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the compression format” as required by the claim. Patent Owner disagrees, arguing that the repackaging does not alter the format of the video signal.  Interestingly, at this point in the analysis (that is, outside the claim construction context), the Board looks to the IEEE Dictionary for the definition of “convert” and finds that the form of the data must be changed for a conversion.  The Board ultimately agrees with Patent Owner, explaining that TV receiver part 56 does not change form through the repackaging. Since Palin is the foundation for all grounds of rejection, this shortcoming sinks the Petitions.

Result: Petitions Denied.

Lessons from IPR2013-00572, -00573:

  1. On their own, these cases don’t tell us too much.  But it is interesting that Samsung’s four other IPRs against VIS were granted. I checked into the -00569 case, and there the grounds based on Palin alone were also denied.  But there was a secondary reference, Seaman, which discloses a video decoder that can convert video data into any one of these formats: NTSC, PAL, SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, HDCP.  Petitioner was using Seaman primarily for its disclosure of HD signal formats.  But the Board goes a little beyond, and relies on Seaman to shore up Palin’s shortcomings on the conversion step.  The Board grants the petition as to the 103 combination.
  2. Clearly Samsung could have added the Seaman reference in these two cases as well since it filed all six IPRs on the same day.  I would be interested to see what would happen if Samsung tried to refile these two cases with the addition of Seaman in a 103. Would the Board grant it the second time around? I suspect not, since it could have been used the first time around. But empirical data is better than speculation.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00583

Introduction: Related to yesterday’s post about filing multiple petitions, today’s case touches on the potential trouble that might arise where two IPR petitions include arguments that are not wholly consistent with each other.

Caption: Baxter Healthcare Corp., Apatech, Inc., and Apatech Limited v. Millenium Biologix, LLC

Patent No.: RE41,251

Background: The ’251 reissue patent was also the subject of IPR2013-00582, filed concurrently with this IPR Petition.  Further, the ‘251 reissue patent claims priority to international application PCT/CA96/00585, published as WO97/09286 (“Pugh”). There are continuation-in-part applications existing between Pugh and the ‘251 reissue. In this case, the Petitioner seeks to institute trial as to claims 1, 6, 8, and 10-12 based on eight different grounds of rejection. In addition, Petitioners dispute that the ‘251 reissue is entitled to Pugh’s filing date as a priority date.

Board Decision Issued on March 21, 2014: APJ Murphy writes for the panel including APJ Kamholz and APJ Osinski.

In IPR2013-00582, the Petitioners argued that Pugh is an anticipatory reference to the ‘251 patent. In this case, the Petitioners argue that the ‘251 patent cannot claim priority to Pugh’s filing date because Pugh does not provide written description support for all features of the claim. The Board finds these two positions to be inconsistent. It explains “we … do not understand how Pugh could be an anticipatory reference disclosing each and every claim limitation in claims 1, 6, 8, and 10-12, if Pugh fails to disclose the substitution limitation required by independent claim 1.”  Each of the eight grounds of rejection are therefore dismissed because Petitioner has not convinced the Board of the ‘251 reissue’s later priority date. [The -00582 case’s petition was granted, but not as to the challenges based upon Pugh]

Result: Petition Denied.

Lessons from IPR2013-00583:

  1. Patent owners have limited tools available to them at the preliminary response stage. One tool is pointing out petitioner arguments that are inconsistent with each other, whether those arguments are presented in a single petition or are included in multiple petitions. I’m not aware of any regulatory restriction on making arguments to the Board in the alternative. But this case shows that the Board may look at contradictory/inconsistent positions with a skeptical eye.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00581

Introduction: In today’s case, the Board’s decision was published about two months after the Preliminary Response was filed. Relatively speaking, that’s pretty quick. It may be in part because the Board already looked at the ‘936 patent in conjunction with an earlier IPR.

Caption: SAS Institute, Inc. v. Complementsoft, LLC

Patent No.: 7,110,936 (entitled “System and Method for Generating and Maintaining Software Code”)

Board Decision Issued on December 30 2013: APJ Bisk writes for the panel including APJ Turner and APJ Arbes.

Background: The ‘936 patent was also the subject of IPR2013-00226, and in that case the trial was instituted on five grounds, to cover 9 of 10 challenged claims (claims 1 and 3-10).  Here, the Petitioner presents 18 grounds of challenge variously against claims 1-16 of the ‘936 patent.

Common wisdom in the IPR blogosphere encourages refiling IPRs on rejected challenges, at least when time permits. But here, the Board rejects five of Petitioner’s challenges as “based upon substantially the same prior art and arguments as set forth in IPR2013-00226.” See Decision at p. 4. The basis for this denial is Board discretion under 35 USC 325(d).

More specifically, at p. 22 of the Decision, the Board looks for a heightened showing from the Petitioner on these challenges:

Thus, SAS’s petition in this case presents substantially the same prior art and arguments previously presented in its petition in IPR2013-00226. SAS provides no explanation as to why the grounds of unpatentability newly offered in this petition for claims already involved in an inter partes review afford any benefit over those on which we have begun proceedings. Indeed, SAS’s newly asserted grounds are based on essentially the same combinations of references with Antis replaced by the combination of Oracle Primer and Oracle8 Primer. SAS does not explain why, even though both Oracle Primer and Oracle8 Primer were included in the first petition, these newly presented combinations were not raised in the prior petition.

The practice of a particular petitioner filing serial petitions challenging claims already involved in an instituted proceeding and asserting arguments and prior art previously considered by the Board is contrary to the goals set forth in our statutory mandate and implementing rules

Id. at 22-23 (emphasis added).  The remaining challenges were denied based on lack of adequate basis to combine, and a failure to show all elements in the prior art.

Result: Petition Denied.

Lessons from IPR2013-00581:

  1. The Board is not giving free second bites at the IPR apple. This makes sense, since the Board has a large docket to manage and probably doesn’t want to see every case come around a second time.
  2. Petitioners considering a second bite may need to come forward with additional explanation (which reads somewhat similar to the “good cause” requirement for modifying a scheduling order in litigation) to avoid a 325(d) denial.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00551, -00552

Introduction: It’s been a while since my last post, but I haven’t given up on this blog yet. Here’s hoping the next post doesn’t take as long.

Today’s two cases are interesting because the patent owners didn’t file preliminary responses! Combined, the two institution decisions span about 75 pages, and each decision addresses priority dates of the challenged claims within a chain of claimed priority applications. Add in some means-plus-function constructions and you have quite the smorgasbord of IPR issues for the Board to parse through. And there are a few good lessons on claim construction here. Read on!

Caption: GRACENOTE, INC. v. ICEBERG INDUSTRIES LLC

Patent No.: 7,174,293 (-00551 case); 7,783,489 (-00552 case)

Technology at Issue: Both patents relate to the use of a hand-held device to “listen” to a song, to compare the song’s signals to a database of templates corresponding to audio works, and to thereby identify the song title. The Board identifies the illustrative claims, which are compared below:

IPR2013-00551 IPR2013-00552
73. Apparatus for recognizing free-field audio signals, comprising: 14. A hand-held music capture device comprising:
a hand-held device having a microphone to capture free-field audio signals; a microphone which receives a random portion of an analog audio signal;
a local transmitter, integral to said hand-held device, to transmit a signal corresponding to the captured free-field audio signals to a recognition site, the transmitted signal corresponding to a portion of a recorded audio work that is less than an entire recorded audio work;
said local transmitter further comprising an analog-to-digital converter to convert the free-field audio signal to a digital format; and an analog-to-digital converter to convert the received portion of the audio signal into a digital signal;
a signal processor which (i) receives a less than approximately six second portion of the digital signal and (ii) signal processes same into a digital time series representing the voltage waveform of the captured audio signal;
a recognition processor and a recognition memory at the recognition site, said recognition memory storing data corresponding to a plurality of audio templates, each audio template corresponding to substantially an entire recorded audio work, a memory which stores the processed fixed-time portion of the digital signal that corresponds to less than a complete audio work;
said recognition processor comparing the signal transmitted from said local transmitter with at least one of the audio templates stored in said recognition processor memory, said recognition processor providing a recognition signal based on the comparison. transmission structure which transmits the stored portion of the digital signal to a recognition processor; and indicia structure configured to indicate an identification signal provided by the recognition processor, said identification signal corresponding to the random portion of the analog audio signal.

 

Board Decisions Issued on February 28, 2014 (-00551 case) and March 7, 2014 (-00552 case): The panel includes APJ Zecher, APJ Arpin, and APJ Ward.  APJ Arpin writes for the panel in the -00551 case, and APJ Ward writes for the panel in the -00552 case. There is some overlap in the decisions.

Discussion: Each Petition asserts three anticipation grounds of challenge, and a series of obviousness-based challenges. The allegedly anticipating references are Wang, Sonoda, and Ikezoye. Claim construction occupies a fair portion of the Board’s analysis. In the -00551 case, the Board rejects Petitioner’s argument that certain means-plus-function terms are indefinite for failure to disclose corresponding structure in the specification. [[the PTAB can agree with an indefiniteness argument in IPR, but that generally results in dismissal of the IPR as to the indefinite claim(s), by the way, so the strategy taken here finds me contemplative at the moment]] In both cases, the Board is not satisfied that Petitioner’s claim constructions are supported by the specifications, and reaches its own constructions.

Next the Board spends significant page-space evaluating the proper priority date of the challenged claims. In the patent family, there were two provisional applications having different filing dates, a non-provisional, a continuation-in-part thereof (the -00551 case’s patent), and a continuation thereof (the -00552 case’s patent). In view of the Board’s claim constructions, the Board evaluates each of Petitioner’s arguments on priority by comparing the properly-construed claims to the priority documents. Through this process, it reaches the conclusion that the Wang reference is not prior art under 35 U.S.C. 102(e) vis-à-vis the challenged claims.

Finally, moving on to the grounds of challenge, the Board tosses the challenges based on Wang, and challenges based on insufficiently supported theories of inherency. In one instance, the Board cites to Petitioner’s expert declaration, which in one instance states that portions of Sonoda are “suggestive” of a claim limitation. The Board also kicks out the challenges against the means-plus-function claims. Since Petitioner did not propose a construction for these terms, Petitioner could not have satisfied its burden as to these claims. The Board cites to 37 CFR 42.104(b)(3), which requires a construction for M+F limitations. See -00551 Decision at p. 38. Elsewhere, the Board is not convinced that challenges are fully supported. In one example, the Board seems to agree that Sonoda’s system would include an analog-to-digital convertor, but is not convinced that the A/D convertor is Sonoda is part of an “integral transmitter,” as required in certain claims. In another example, the Board states that “reliance on Dr. Kalker’s declaration to supply elements missing from Sonoda is not appropriate in an anticipation rejection.” See -00551 Decision at p. 41. A similar issue arises in the -00552 Decision at p. 28.  Also in the -00552 Decision, the Board finds a gap between the cited portions of the Ikezoye reference and the claim language at issue:

Claim 15 recites that “at least one of the hand-held device and the processor extracting a time series of spectrally distinct audio signal features from the captured free-field audio signals.” Ex. 1020, col. 20, ll. 22-42 (emphasis added). For this limitation in claim 15, Petitioner‟s claim chart cites to multiple references, including Ikezoye, Blum, and Gibson. Pet. 36. For its anticipation challenge, only the citation to disclosures in Ikezoye are relevant. Specifically, Petitioner cites to Ikezoye‟s disclosure that “a sound file may be sampled according to its acoustic/perceptual features over time.” Pet. 36 (Ex. 1005, col. 8, ll. 4-8). Petitioner provides no explanation of how Ikezoye‟s sampled acoustic/perceptual features anticipate the claimed step of a processor “extracting a time series of spectrally distinct audio signal features from the captured free-field audio signals.

See p. 25 (underlining added).

Result: Petitions Denied.

Lessons from IPR2013-00551 and -00552:

  1. These cases show that patent owners do not have to file a preliminary response to an IPR petition, and the Board may still reject the petition. This is a good data point for patent owners.
  2. Here, claim construction played a big role. On the means-plus-function terms, the Board warned petitioners to propose constructions or face denials.
  3. I’ll be curious to see if the Board ever takes similar steps where petitioners offer incorrect constructions. It is clear that the Board is looking to petitioners to not only propose constructions, but to propose the correct constructions. For example, if there are clear definitions or disclaimers in the file history for claim terms, and petitioner does not use them in the grounds of challenge, should the petition be denied? (arguably, the obligation to reach the correct construction is built into the 37 CFR 42.104(b)(4) requirement – how can the petition include the burden-carrying explanation of unpatentability if the petitioner’s claim construction is incorrect?)
  4. Last, the Board is looking for explanation that spans the gap between cited reference and claim limitation. The block quotation above provides a nice example of what the Board doesn’t like.

If you want to discuss IPRs further, please feel free to contact me at whelge at dbjg dot com.

IPR2013-00528

Introduction: The last decision I wrote about was only three pages. Today’s Board decision is 33 pages, which may be the longest petition denial I’ve seen so far. There is only one independent claim challenged, but it is based on 5 different grounds of challenge, with very little overlap among the references in those grounds. The Board does a fine job of addressing each ground.

Caption: Lake Cable, LLC v. Windy City Wire Cable and Technology Products, LLC

Patent No.: 8,424,795 (titled “Wire and Cable Dispensing Container and Systems”

Board Decision Issued on February 19, 2014: APJ Rice writes for the panel including APJ Lee and APJ Cocks.

Discussion: Here, the Board finds fault with each obviousness combination, which is instructive to practitioners. In response to the first ground, the Board determines that the proposed combination of references fails to disclose all features of the independent claim. But the Board also determines that Petitioner has not articulated an adequate reason why a POSITA would have modified the primary reference [Bass] to include a passageway through the shaft. Thus, it is not merely that a POSITA could add a passageway to the shaft of Bass’s boxed spool assembly. The Board wants to know why a POSITA would want to do that. Notably, on this ground, the Petitioner recites a basis for the combination that was expressed by the examiner during prosecution: “for the purpose of providing access for a shaft to be passed through the passageway if desired.” See Petition at p. 25. The Board wants to know also why the modification would be desired by the POSITA.

In response to the second ground of rejection, the Board is not convinced by a combination basis where the references are alleged to “relate to each other.” Common subject matter is not enough, without further discussion. Again, the Board wants to know why it would have been reasonable to modify reference one with reference two.

In response to the third ground, the Petitioner has given the Board a why for the modification, namely that the passageway would have allowed for “mounting or ease of transportation.” But the Board now wants to know how the passageway would yield this result. The Board also is not convinced that the combination discloses all features of the claims.

In response to the fourth ground, the Board rejects Petitioner’s argument that a modification would result in no significant difference, technically speaking. The Board concludes that this argument “assume[s no significant difference], without factual support or technical argument.” The Board also identifies a why problem again here (i.e. why a POSITA would want to make the change).

The fifth combination is rejected again for a why problem.

Result: Petition Denied.

Lessons from IPR2013-00528:

  1. This case is a good reminder on the logic necessary to convince the Board on obviousness combinations. In each ground the Board goes through the all-elements evaluation, but also looks to the reason for modifying reference one with reference two. If the petition does not describe the how-why of the modification, the Board may not institute trial.
  2. Similarly, the board’s ruling on the first ground also reminds us that regurgitating an examiner’s basis for combination (or other conclusion) may not carry the day. The Board is not accepting those arguments just because an examiner previously presented them in a rejection. The petitioner is still on the hook to carry its burden.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.

IPR2013-00526

Introduction: Here’s a short one (you’ll see why in a moment).

Caption: Tandus Flooring, Inc. v. Interface, Inc.

Patent No.: 8,468,772

Importance of Preliminary Response: The PR is filed along with Exhibit 2001, in which the Patent Owner statutorily disclaims all of the claims of the ‘772 patent under 35 USC 253(a).

Board Decision Issued on February 14, 2014: APJ Quinn writes for the panel including APJ McNamara and APJ Ward, in a three-page Decision.

Discussion: No IPR will be instituted on disclaimed claims, per 37 CFR 42.107(e). As such, there really isn’t much for the Board to rule on. What is interesting is that the Patent Owner also argues in the Preliminary Response that:

The present Statutory Disclaimer does not constitute an admission or acquiescence by Patent Owner with regard to the Petition. Rather, Patent Owner disagrees with Petitioner’s arguments set forth in the Petition and makes the present disclaimer without prejudice to Patent Owner’s ability to rebut such arguments (including characterizing and distinguishing the prior art references cited in the Petition) in any forum, including, but not limited to, related Case Nos. IPR2013-00333 and IPR2013-00527.

Result: Petition Denied.

Lessons from IPR2013-00526:

  1. Based on my own research, Case Nos. IPR2013-00333 and IPR2013-00527 are both directed to patents in the same family as the ‘772 patent, and in both cases the petitions were granted and trials instituted. Thus, it is possible that a) Interface didn’t want to pay to fight a third IPR, and b) felt that its litigation against Tandus would still be adequately situated without the ‘772 patent involved. Settlement efforts may also have been attempted but unsuccessful. Overall, it seems Interface is dedicating its resources to the prior filed IPRs, which have gotten fairly busy with depositions, motions to amend, etc.
  2. So this case serves as a reminder that, at the preliminary response stage, a patent owner can avoid the inconvenience of an IPR by disclaiming the challenged claims.

If you want to discuss IPRs further, please feel free to post a comment, or contact me at whelge at dbjg dot com.