In two related inter partes review final written decisions, the PTAB relied on extrinsic evidence to invalidate patent claims. In Mobotix Corp. v. e-Watch, Inc., Petitioner Mobotix Corp. challenged the validity Patent Owner E-Watch, Inc.’s U.S. patents 7,023,913 and 7,733,371, related to digital security multimedia sensors. (Cases IPR2013-00334, Paper No. 5; IPR2013-00337, Paper No. 5) The Petitioner asserted that the claims of the challenged patents were unpatentable as obvious over various combinations of prior art references. (Id. at p. 3) The PTAB granted institution of the IPRs based on most of the Petitioner’s asserted grounds of unpatentability and ultimately found the challenged claims unpatentable over the asserted prior art combinations. (Cases IPR2013-00334, Paper No. 14 at p. 24; IPR2013-00337, Paper No. 12 at pp. 29-30).
Carefully “Stitching” Together a Declaration Can Help Increase the Odds of Success During IPR Proceedings
Declarations can play a critical role in an Inter Partes Review (“IPR”) proceeding. To date, most IPR petitions filed with the Patent Trial and Appeal Board (“PTAB”) have included a supporting declaration. Further, the PTAB often relies heavily on such declarations in deciding IPR petitions.
In the final decisions issued on September 18, 2014 for two related proceedings, the Patent Trial and Appeal Board considered motions to exclude evidence involving webpage printout documents from Wikipedia and Webopedia. See SAP America, Inc. v. Lakshmi Arunachalam (CBM2013-00013, Paper No. 61, pp. 27-29) and SAP America, Inc. v. Lakshmi Arunachalam (IPR2013-00194, Paper No. 67, pp. 33-34). In the two proceedings, a Wikipedia article titled “Web application” was used by the patent owner to help define what the term “Web application” means for claim construction purposes, and a Webopedia article titled “The Difference Between the Internet and World Wide Web” was used to support the patent owner’s distinction between the terms “internet” and “world wide web”. The petitioner moved to exclude these webpage printout documents along with other documents, arguing that these documents are unauthenticated and that a statement by the inventor that each of the documents is a true, authentic, and correct copy of the original document is insufficient for authentication.
In an Inter Partes Review proceeding, patent owner Escort, Inc., who was permitted to provide live testimony during the oral hearing, lost its bid to antedate the only two references relied on by petitioner K-40 Electronics, LLC. K-40 Electronics, LLC v. Escort, Inc. (IPR2013-00203, Paper No. 45, August 27, 2014). The inventor of challenged U.S. Patent 7,999,721, Steven K. Orr, testified live at the oral hearing in an attempt to support patent owner’s allegations that actual reductions to practice of the claimed invention antedated the applied references. However, the Final Written Decision relied on portions of Orr’s testimony to support the petitioner’s position that the alleged actual reductions to practice did not practice all of the claimed features. (Id. at p. 13). While the live testimony was used to the detriment of the patent owner, this scenario provides some insights on when live testimony will be permitted and also how the testimony will be limited. It also provides a cautionary tale that should lead a patent owner/petitioner to carefully consider pursuing this option.
While an IPR petitioner may challenge the validity of a patent based on any prior patents or printed publications under 35 U.S.C. §311(b), scouring the internet, libraries, or personal repositories looking for product advertisements or brochures to use as prior art, may prove to be a futile exercise if petitioner cannot prove the date, or even source, of the publication.