In Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”). However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as to the meaning of a claimed “graphical symbol.” As a result, the Board determined that the Petitioner failed to establish that any claims of the patent-at-issue were disclosed or made obviousness by the art of record.
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.