Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 14
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Final Written Decision in IPR2012-00001
· Recent Refusals to Institute
· PTAB Trial Section Judges
Official PTAB statistics regarding institutions, joinders, denials and disposals (see http://www.uspto.gov/ip/boards/bpai/stats/aia_statistics_12_05_2013.pdf):
The same PTAB webpage reports the following statistical breakdown of petitions by technology:
PTAB Issues First Final Written Decision in IPR
Garmin International, Inc. v. Cuozzo Speed Technologies, IPR2012-00001 (Paper No. 29, entered November 13, 2013).
The Board’s final decision issued well within the twelve month timeframe required by the statute. The proceeding was instituted on January 9, 2013, and the oral hearing was held on August 16, 2013. The decision invalidates the claims at issue.
The Patent relates to a speed limit indicator for vehicles that enables the driver to determine the speed limit without looking at the road signs. The Board reiterated that claim terms of extant patents are to be given their “broadest reasonable construction”. At issue here was the term “integrally attached,” which was interpreted to mean 2 parts that are physically joined together as one unit. Notably, the Board gave weight to the cross-examination deposition testimony of the expert witness.
Antedating Prior Art References Asserted Under 35 U.S.C. §102(e)(2)
Two references asserted by Petitioner qualified as prior art under 35 U.S.C. §102(e)(2) because they have an effective filing date earlier than the effective filing date of the patent at issue. The Patent Owner attempted, unsuccessfully, to remove these references as prior art by establishing an earlier date of invention. Under 102(e)(2), priority of invention goes to the first party to reduce the invention to practice, unless the other party can show that it was the first to conceive of the invention and that it exercised reasonable diligence in later reducing the invention to practice.
The Board, consistent with previously decided interference proceedings, concluded that, to establish a conception date, the testimony of the inventor must be corroborated (applying the rule of reason). Here, the inventor first tried to use a speeding ticket written on November 28, 1999, to evidence conception, arguing that, while he was pulled over, he recalls coming up with the idea for his patented invention. The Board found this insufficient corroboration because the written evidence corroborates only that the inventor received a speeding ticket – not what the inventor conceived. The inventor next asserted his written disclosure to the Invention Submission Corporation with the handwritten date of October 30, 2000. The parties did not dispute the technical content of the submission, but the handwritten date. The Board rejected the handwritten date because it lacked corroboration from something/someone other than the inventor. Decision at p. 22. Here, the disclosure form was witnessed by a third party -- but the patent owner failed to authenticate the signature with testimony from the signatory. The Board also pointed out that the patent owner did not establish that the invention disclosure was obtained from files maintained as a routine business record. The earliest date the patent owner was permitted to establish was December 8, 2000, the date of a letter from a patent attorney to the inventor referencing the disclosure of invention.
With respect to diligence, the Board, consistent with Board decisions in the past, applied diligence strictly, noting that short periods of unexplained inactivity can be sufficient to defeat diligence and further that corroboration is necessary for dates and facts. The Board concluded 2 periods of little activity were not adequately explained. The first was a 2 month gap for the inventor to provide comments to the preliminary report subsequent to his patent attorney and the second was a 5 month gap between receiving favorable news regarding search results and paying an advance fee for prosecuting the patent. Even though the inventor argued that he had insufficient income and that it took time to convince his parents to advance the money from his trust fund to finance the patent, the Board indicated that the patent owner did not provide sufficient facts to excuse the delay.
Board Denied Motion to Amend Claims
The patent owner moved to substitute the three claims at issue with three new claims that each contained additional limitations. 35 U.S.C. § 316(d)(3) prohibits claim amendments that enlarge the scope of the claims or introduces new subject matter. Here, the Board denied the motion, indicating that patent owner failed to meet its burden (under 37 CFR §42.121(b)(1)) to establish written description support in the original disclosure for each added claim limitation.
Recent Refusals to Institute
The PTAB has refused to institute 45 proceedings, the 8 most recent denials occurring in November in IPR2013-00298, -00305, -00307, -00315, -00316, -00324, -00330, and -00399.
Five of the most recent 8 denials were based on failure to make the threshold showing (i.e., reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition).
Two denials were based on the one year bar of 35 U.S.C. § 315(b). Biodelivery Sciences International, Inc. v. Monosol RX, LLC, IPR2013-00315 (Paper No. 3 entered November 13, 2013) and -00316 (Paper No. 28 entered November 13, 2013) (Judges Bonilla, Kamholz and Crumbley). In each of the Biodelivery Sciences IPRs, the Board held that a served complaint triggers the one year bar, even when the petition challenges claims amended by a reexamination certificate issued after service of the complaint. Per the PTAB, reexamination does not result in issuance of a new patent but instead incorporates in the patent any proposed amended or new claim determined to be patentable and the timeliness matter is to be measured with reference to the service date of the complaint charging infringement of the patent, not with reference to the date of a reexamination certificate.
One denial was based on the “multiple proceedings” provision of 35 U.S.C. § 325(d), the concluding sentence of which provides: “In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00324 (Paper No. 19, entered November 21, 2013) (Judges Green, Katz and Crumbley). Noting the PTAB’s prior institution of an IPR proceeding on the same patent, in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00128, the -00324 panel determined that the teachings of the references relied upon in the -00324 petition “are substantially the same as those found in” the references relied upon in the -00128 proceeding.
“New” Standard for Pro Hac Vice Recognition; Broadening of the Pool of Judges Sitting on AIA Matters
In Motorola Mobility LLC v. Arnouse, IPR2013-00010 (Paper No. 6, entered October 15, 2012), in its first expanded panel decision in an AIA proceeding, the Board announced the expected contents of a motion for pro hac vice admission. The order was signed by nine APJs, namely Chief Judge Smith, Vice Chief Judge Moore, Lead Judge Tierney and Judges Lee, Lane, Medley, Chang, Giannetti and McNamara. Subsequently, the PTO adopted a set of Rules of Professional Conduct which are codified at 37 CFR §§ 11.101 et seq., replacing the rules formerly codified at §§ 10.20 et seq. and referenced in Motorola Mobility.
In Unified Patents Inc. v. Parallel Iron, LLC, IPR2013-00639 (Paper No. 7, entered October 15, 2013) the PTAB revised its earlier standard to make specific reference to the new rules, namely 37 CFR §§ 11.101 et seq. This order was signed by seven APJs, namely Vice Chief Boalick and Judges Lane, Roberson, Giannetti, Obermann, Bisk and Quinn. The Unified Patents order appears, in all other respects, to track the earlier Motorola Mobility order.
Of interest to “Board watchers” are the judges involved. Missing from the list of signatories to the second order are Chief Judge Smith, Vice Chief Judge Moore, Lead Judge Tierney and Judges Lee, Medley, Chang, and McNamara. Only Judges Lane and Gianetti carry over from the earlier panel. It is understood from discussions at the AIPLA annual meeting in October that Judges Moore and Tierney are no longer taking leading roles in connection with the group of APJs assigned to AIA proceedings, while Judges Boalick and Giannetti have assumed leading roles.
Recent opinions by the PTAB have revealed additional names of judges involved in AIA proceedings, including Judges William V. Saindon and Matthew G. Clements. There are at least 26 APJs to whom administration of the proceedings have been assigned. The pool of APJs participating in the proceedings appears to be continuing to broaden.
Recent Challenge To AIA
As reported in the November 2013 keePing TABs, on October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia (Norfolk Division) against the Patent Office, challenging the Office’s refusal to grant a series of inter partes review petitions, namely IPR2013-00220, -00222, -00223, -00224 and -00225, filed in March 2013 and denied institution in August 2013. On November 16, 2013, Dominion Dealer Solutions, LLC petitioned the Court of Appeals for the Federal Circuit for a writ of mandamus in these cases.