Two decisions regarding whether the same or substantially the same prior art or arguments have already been considered by the USPTO have been designated as “Informative”
Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative).
Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational).
In two decisions, designated as informative on March 21, 2018, the Board has offered guidance on when the Board will exercise its discretion, under 35 U.S.C. § 325(d), to deny institution of a post-grant proceeding because the USPTO has already considered the same or substantially the same prior art or arguments. “Informative” decisions provide the Board’s guidance on an issue but are not binding authority.
In Becton, Dickinson and Co., the Board identified six factors commonly considered when evaluating whether to deny institution under § 325(d):
(a) the similarities and material differences between the asserted art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art evaluated during examination;
(c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
(d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.
Becton at 17-18.
The Board was careful to note this list is “non-exclusive” and merely a list of commonly considered factors. Becton at 17 (emphasis in original).
In applying the factors, the Board gave little weight to the Petitioner’s use of a new reference, finding the new reference was mostly cumulative. The Board also gave little weight to the Petitioner’s submission of an expert declaration because the declaration did not: why the new reference would not be cumulative; explain how the Patent Owner’s previous arguments, made during prosecution, were in error; or offer sufficient underlying facts or data to support its position. Becton at 25, 27, 28. Accordingly, the Board found the factors weighed in the Patent Owner’s favor and denied institution on that ground. Becton at 28.
In Kayak Software Corp., the Board considered the effect of at patent’s prosecution history on determinations under 35 U.S.C. § 325(d). The patent at issue was filed over 12 years before it was issued which led to an extensive prosecution history including seven Office Actions and two decisions by the Board, both of which entered new grounds for rejection. See Kayak at 6-7; see also U.S. Patent No. 7,072,849.
The Petition was based on various combinations of four prior art references. However, three of these references had been thoroughly considered during the patent’s prosecution by both the Examiner and the Board. Kayak at 8. The prosecution history contained dozens of pages devoted to each reference. Kayak at 9. As such, the Board was unconvinced that any combination of these three references, regardless of whether or not that exact combination had been used in a rejection, could be the basis for institution in light of § 325(d). Kayak at 9. The Board found the fourth reference to be cumulative in part because the Petitioner relied on one of the three references to teach the same subject matter in another part of the Petition. Kayak at 10. The Board noted this was at least circumstantial evidence that the fourth reference was substantially similar. Kayak at 10.
Additionally, in dicta, the Board offered several possible scenarios in which similar prior art could still lead to institution, such as: clear error in the original prosecution; when the prior art was only cursorily considered; or raising an issue the USPTO was unaware of, like evidence of priority dates. Kayak at 11.
Brendan Seth O'Shea
Email: email@example.comBrendan O’Shea is an associate in the firm’s Electrical and Mechanical Patent Prosecution practice group, where he prosecutes patent applications for domestic and international clients.
Mr. O’Shea’s patent prosecution experience spans a wide range of technologies, including software and Internet-based applications, business methods, telecommunications, biomedical devices, and mechanical arts.
Claim Validity Upheld Based on Showing of Lack of Motivation to Combine References
Author: James A. Gromada
In Resmed Limited et al. v. Fisher & Paykel Healthcare Limited, Case No. IPR2016-01724, the Patent Trial and Appeal Board (PTAB) was presented with a question as to whether several claims of U.S. Patent No. 8,453,641 B2 (hereinafter “the ‘641 patent”) are unpatentable under 35 U.S.C. §103 as obvious over a combination of three references. The ‘641 patent is entitled “Apparatus for Measuring Properties of Gases Supplied to a Patient” and, as provided at column 2, lines 57-62 of the ‘641 patent, its stated purpose is “to measure various properties, for example temperature or humidity, at the end of a gas delivery tube or conduit using sensors mounted on a wire, such as a wire used for heating the gases flow[ing] through the tube or conduit, where the wire resides within the delivery tube or conduit.”
When a combination of prior art references is cited for the purpose of determining that a claim is unpatentable under 35 U.S.C. §103, a showing that a skilled artisan would have been motivated to combine the references in order to achieve the claimed combination is required. The Supreme Court has stated that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Instead, “a range of real-world facts to determine ‘whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue'” must be considered. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.d 1336, 1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
The critical feature of the challenged claims of the ‘641 patent is the use of a heater wire for heating the conduit and also for carrying electrical signals from measuring sensors. The Petitioner, Resmed, relied on one cited reference, Edirisuriya, as teaching that “the heater wire itself could be used to carry electrical signals from measuring sensors,” although Edirisuriya does not explain how the heater wire can be used to carry electrical signals from a sensor. In response, the Patent Owner argued that a skilled artisan would not have been motivated to combine Edirisuriya with the other two cited references, MR810 and Gradon, because the use of the heater wire to carry electrical signals would have increased complexity and rendered the MR810-Gradon system inoperable. In particular, the Patent Owner argued that a temperature sensor cannot simply be added in series with a heater wire, because the heater wire requires a relatively high electrical current and power dissipation, whereas the temperature sensor requires a relatively low electrical current and power dissipation, and therefore, a simple substitution would lead to self heating.
In its analysis, the PTAB stated that “[w]ith respect to each of the proposed circuit designs that Petitioner contends a skilled artisan would have been aware of to implement the combined teachings, a skilled artisan would have been faced with the real-world fact that there was uncertainty as to the operability of the design,” because the proposed circuit designs “are not based on disclosure in the prior art” – Petitioner’s expert “confirms that he did not locate any prior art references disclosing a circuit design in which the heater wire is utilized to carry electrical signals from measuring sensors” – and because Petitioner did not provide sufficient evidence that any of the proposed circuit designs would be operable in any device.
Conversely, Patent Owner argued that “all three proposed circuit designs would have been inoperable.” In particular, Patent Owner’s expert stated that if the proposed Vishay thermistor was combined with the MR810 apparatus, the power dissipated would exceed the maximum rating of the Vishay thermistor, thereby destroying it, and further, that the Vishay thermistor is not typically used for temperature measurement. Petitioner’s expert agreed that “he would not use the proposed Vishay thermistor in combination with the MR810 heating wire because it would exceed the Vishay thermistor’s power dissipation specification, and that the heater wire and the supply voltage would need to be changed.”
Based on the above, the PTAB found “that the complexity of the proposed circuit designs and the lack of evidence provided by Petitioner describing additional circuitry and control logic that would be necessary to implement such circuitry in the proposed modified designs, which Patent Owner establishes are non-trivial, weigh against a finding of motivation to combine.” As a result, the PTAB held that “the motivation to eliminate an additional or external wire and reduced the number of contacts would have been outweighed by the countervailing real-world reasons not to combine the references,” and that “Petitioner’s challenges rest on impermissible hindsight reconstruction of the disclosure in the ‘641 patent.”
This case illustrates that a challenge to the validity of a patent claim can be effectively countered by the testimony of Patent Owner’s expert that there is no motivation to combine references. In particular, a convincing demonstration that there is uncertainty as to the operability of the proposed combination and/or a showing that practical, real-world considerations tend to weigh against combining the references may be decisive.
Mr. Gromada practices in all areas of patent law, including: patent preparation and prosection; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom-to-operate analysis, and due diligence work.
His experience includes a wide range of electrical and mechanical technologies, including radio frequent (RF) communcations technologies and equipment, cellular networks, medical devices, computer and Internet-related technologies, televisions and image display devices, computer gaming applications, and financial systems. Mr. Gromada was previously employed with Science Applications International Corporation (SAIC) as a research engineer in the defense intelligence industry.
See his full biography here.