The Limits of Relying on Anticipation
Novelty and obviousness are governed by 35 U.S.C. §§ 102 and 103, respectively. Generally speaking, a novel claim is one that has not been previously described or practiced. Similarly, a claim is non-obvious if the claim, as a whole, would not have been obvious to one of ordinary skill before the effective filing of the patent application or, for pre-AIA, invention by the inventor. Anticipation under § 102 requires that all the elements of a claim be found in a single prior art reference. The elements must be either expressly or inherently described in the reference without modification.
On March 31, 2016, in Alarm.com v. Vivint (IPR2015-020004), the Patent Trial and Appeal Board (PTAB or Board) denied institution of an inter partes review (IPR) of claims 1-43 of U.S. Patent No. 6,147,601 (the ‘601 patent). The Petitioner asserted that many of the claims of the ‘601 patent, including every independent claims, were anticipated by a single reference, Scadaware, and that a number of dependent claims were obvious over Scadaware either alone or in combination with other references. In the obviousness assertions, the Petitioner did not revisit the elements of the independent claims, but merely relied upon the anticipation analysis. The PTAB found that Scadaware failed to anticipate each and every element of the independent claims, and thus denied the assertion that the independent claims were not novel. The PTAB further denied institution of the obviousness assertions, finding these deficient by virtue of their reliance on the anticipation analysis.
Each independent claim of the ‘601 patent requires that a computer server forward, or is capable of forwarding, outgoing messages. Meanwhile, Scadaware describes a system including a remote terminal unit (RTU) and a host unit (Host). The Petitioner asserted that the Host corresponds to the computer server of the ‘601 patent, but that any functions performed by the RTU could also be performed by the Host. That is, the Petitioner relied on the Host, modified to include the message forwarding functions of the RTU, to teach the claimed server. The Petitioner relied upon Scadaware’s teaching that the Host and RTU are “almost the same,” as well as expert testimony that the Host could perform all the functions of the RTU to bolster its position.
The Board began its review by explaining, based on the infringement analysis of Typhoon Touch Tech. v. Dell, 659 F.3d 1376 (Fed. Cir. 2011), that a reference does not anticipate a claim by merely being capable of being configured to perform the claim functions. Rather, “[a]nticipation requires that the asserted prior art apparatus, as disclosed, must be capable of performing the recited function, not merely that it might be modified to include such capability.”
The PTAB recognized that Scadaware discloses the similarities between the RTU and the Host. The PTAB further recognized that the Host may have been programmable to perform the functions of the RTU. However, a likelihood or probability of modification does not meet the requirement that the identified server is necessarily capable of performing the functions of the claimed server. That is, the Petitioner failed to present sufficient evidence that the Host of Scadaware was capable of forwarding outgoing messages without modification. Therefore, the Board found that the Petitioner was unlikely to prevail on the anticipation grounds.
The PTAB then turned to the obviousness grounds asserted against the dependent claims. The Petitioner’s contentions asserted that additional elements of these dependent claims were obvious over Scadaware, either alone or in combination with two other references. However, the Petitioner merely relied upon the anticipation analysis for teaching the elements of the base claims. Thus, Petitioner’s obviousness analysis was imbued with the deficiencies of the anticipation analysis. Therefore, the Board determined that the Petitioner was unlikely to prevail on the obviousness grounds.
The Alarm.com decision highlights the very real limitations of anticipation assertions. Although an asserted reference may arguably disclosed all the elements of a relevant claim, it does not anticipate the claim unless it discloses the elements in the configuration described by the claim. Further, at least in IPR’s, obviousness assertions are eroded by failures in anticipation grounds on which they depend.
Accordingly, petitioners should take extreme care showing that an asserted reference discloses each and every element as it is described in the claim when asserting anticipation to invalidate a claim. Further, obviousness assertions should not rely solely on anticipation analysis to teach the elements of base claims, lest they fall together. Conversely, patent owners should be aware of the very real limitations of an anticipation assertion, and utilize any difference, no matter how obvious, to swiftly resolve anticipation assertions and obviousness assertions that rely thereupon.
Image derived from <http://www.inkcinct.com.au/web-pages/cartoons/past/2013/2013-681–the-house-of-cars-AUSTRALIA-HOLDEN-CARDS-ECONOMIC-.jpg>.
As an associate in the firm’s Electrical/Mechanical Group, Mr. Carmody prepares and prosecutes patents in a wide range of technologies. He has experience in a range of fields including computer systems, software, embedded architecture, networking, and signal processing.
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