In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that claims 1 -13 and 16-18 of U.S. Patent No. 7,544,094 were unpatentable over a reference in view of common knowledge of a “creative” skilled artisan. The PTAB’s analysis focused not only on what the reference taught but also the inferences that may have been drawn by a person of ordinary skill in the art having creativity. PCT International, Inc. v. Amphenol Corporation, (IPR2013-00229, Paper No. 30, September 11, 2014).
The Central Reexamination Unit (“CRU”) appears to be at odds with the Board of Patent Trial and Appeal Board (“PTAB”) with respect to a Patent Owner’s ability to amend or add claims in an ex parte reexamination proceeding filed during an inter partes review (“IPR”) proceeding. In Game Show Network, LLC et al. v. Stephenson, IPR 2013-00289 (Paper No. 31), the PTAB denied the Petitioner’s request to terminate an ex parte reexamination (“reexam”) stating that nothing in AIA prohibits Patent Owner from filing a reexam to amend claims at issue in a concurrent IPR. On the same day as the PTAB decision, the CRU denied the request to institute reexam, expressing that statements from the PTAB appear to be “contrary to established Office policy.” See USSN 90/013,148, Decision dated 3/21/2014.
Broadest Reasonable Interpretation vs. Ordinary and Customary Meaning: – Challenges Introduced by Applying Different Claim Construction Standards at the PTAB and District Courts
Inter Partes Review (IPR) is quickly becoming a popular means to challenge the validity of issued patents at the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). According to USPTO statistics, 1,700 petitions for IPR were filed between September 2012 and August 28, 2014, and new filings continue to accelerate. Indeed, IPR challenges appear to have become a common defense tactic in modern patent litigation because of IPR’s lower bar for finding issued patents invalid, expedited timeline, and limited discovery. These advantages appear to provide alleged infringers with a better avenue for invalidating an asserted patent compared to traditional district court litigation. IPR also furthers Congress’ intent in creating new post-grant proceedings in the America Invents Act (AIA) to “provid[e] quick and cost effective alternatives to litigation.” However, by applying different claim construction standards at district courts and at the PTAB, new challenges and potential pitfalls have been introduced to both patent owners and challengers.
Recently, in an Inter Partes Review proceeding, patent owner Honeywell International Inc., failed in its attempt to obtain additional discovery under 37 C.F.R. § 42.51(b)(2). Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc. (IPR2013-00576, Paper No. 36, September 5, 2014). However, the real outcome of the decision denying the request proved to be in the patent owner’s favor. While denying the request for additional discovery based on a third party declaration prepared for another proceeding, the PTAB noted that the declaration will be afforded little or no weight because the patent owner did not have a fair opportunity to challenge the declaration testimony. (Paper No. 36 at p. 3).
In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that the petitioner had not proven by a preponderance of evidence that instituted claims 1, 13, and 25 of US Patent No. 8,286,561 were unpatentable because the asserted obviousness grounds were based on a reference that is non-analogous art. Schott Gemtron Corp. V. SSW Holding Company, Inc. (IPR2013-00358, Paper No. 106, August 20, 2014). The ‘561 patent is directed to a shelving adapted for use in refrigerators. The shelving has a top surface with a hydrophobic surface designed to prevent liquid from spilling on other surfaces (Paper No. 106 at pgs. 2-3).