Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 15
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Final Written Decision in IPR2012-00027
· Upcoming Final Decisions
· Recent Refusals to Institute
· Extensions of Time
Official PTAB statistics regarding institutions, joinders, denials and disposals (see http://www.uspto.gov/ip/boards/bpai/stats/aia_statistics_01_02_2014.pdf):
The same PTAB webpage reports the following statistical breakdown of petitions by technology:
PTAB Issues Written Decision in Idle Free Systems, Inc. v. Bergstrom Inc., IPR2012-00027
On January 7, 2014, a final written decision was issued in Idle Free Systems, Inc. v. Bergstrom Inc., IPR2012-00027 (Judges Lee, Giannetti and Fitzpatrick).
This is the Board’s third final decision addressing the merits of the patented claims: the first two final decisions were SAP America, Inc. v. Versata Software, Inc., CBM2012-00001 (Judges Medley, Tierney and Elluru), and Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001 (Judges Lee, Tierney and Cocks). In all three, the challenged claims that went to trial were found unpatentable and cancelled.
Of note in the Board’s decision in Idle Free Systems, IPR2012-00027 (Paper No. 66, entered January 7, 2014), is the Board’s discussion of the credibility of the technical witness and the reasons for denying the Patent Owner’s Renewed Motion to Amend by substituting new claims.
The Board instituted the proceeding on all claims 1-24. Patent Owner Bergstrom conceded that many of the claims were unpatentable, whereupon the Board indicated that those claims would be cancelled without further briefing. PO filed a motion to amend claims, which was initially dismissed and Patent Owner filed a Renewed Motion to Amend by substituting proposed new claims 24-26 for existing claims 17-19 (Paper 29). The final decision concludes that all remaining claims of the patent at issue are invalid and denied the Renewed Motion to Amend.
Of note with respect to the prior art analysis is the Board’s discussion regarding the technical witnesses. The Board credited the testimony of Petitioner’s technical witness (Mr. Williams) despite objections by Patent Owner that Mr. Williams’ credibility was compromised by impermissible conversation with Petitioner’s counsel during a break in Mr. Williams’ deposition. It was established that, during the break, Idle Free’s counsel discussed a question that had been asked of Mr. Williams and, as a result of the conversation, Mr. Williams changed an answer he had previously given, indicating that he had misspoken and given an incomplete answer. The Board acknowledged that Mr. Williams’ conversation with counsel was impermissible and indicated that the Board has taken it into account “generally in assessing his credibility.” However, the Board declined to completely discredit Mr. Williams’ testimony because it was not clear exactly what Mr. Williams and counsel discussed, Mr. Williams was forthcoming about his conversation with counsel and Bergstrom did not point out how Mr. Williams’ single changed answer impacts any issue in front of the Board.
The Board further credited Mr. Williams’ testimony over that of Patent Owner’s technical witness, at least in part, because the Patent Owner’s technical witness provided testimony that focused “on something other than the precise claim feature at issue” and failed to address how one of ordinary skill in the art would perceive a reference.
With respect to the Renewed Motion to Amend, the Board pointed out the Patent Owner must show: (i) the substitute claims do not enlarge the scope of the original claims (not an issue here); (ii) the subject matter of the substitute claims have written description support (although disputed by Petitioner, the Board concluded this was met); (iii) the newly proposed claims are patentable.
With respect to the latter requirement, the Board criticized the Patent Owner for only pointing out why the substitute claims were patentable over the prior art applied to the original claims. The Board made clear that Patent Owner “bears the burden of proof in demonstrating patentability of the proposed substitute claims over the prior art in general,” pointing out that, if the motion is granted, the claims automatically become part of the patent and are not further reexamined. While Patent Owner did indicate that one reference was the “closest prior art,” the Board found “that alone is insufficient and not meaninful, without discussing the level of ordinary skill in the art, and what was previously known, with respect to each added feature, including the ordinary skill set possessed by such a hypothetical person.”
Upcoming Final Decisions
Judging from the dates on which proceedings were instituted roughly a year ago, January 2014 should see final decisions in CRS Advanced Technology, Inc . v. Frontline Technologies Inc., CBM2012-00005 (instituted 1/23/13 and heard 11/6/13), and Liberty Mutual Insurance Company v. Progressive Casualty Insurance Co., CBM2012-00002 and -00004 (both instituted 1/25/13 and heard on 10/21/13). While Microsoft Corporation v. Proxyconn Inc., IPR2012-00026 (instituted 9/18/12 and heard 11/18/13) has passed the 1 year mark, it was joined with Microsoft Corporation v. Proxyconn Inc., IPR2013-00109 (instituted 2/25/13) and, pursuant to 35 U.S.C. § 316(a)(11) the Director may adjust the time period for completion in the case of joinder under 35 U.S.C. § 315(c).
Also due for final decision is a seemingly first-of-its-kind AIA proceeding, Interthinx, Inc. v. Corelogic Solutions, Inc., CBM2012-00007 (instituted 1/31/13). Petitioner Interthinx is no longer involved as a party to the proceeding, having settled in an agreement recognized in an order dated November 12, 2013, Paper No. 47 (Judges Tierney, Chang and McNamara). Observing that “the Board is not a party to the settlement [between the parties] and may independently determine any question of patentability,” the Board announced it would “proceed to a final written decision” based on the “advanced stage of the proceeding.” The matter was considered by the Board to be “briefed fully and ready for oral hearing at the time the parties moved to terminate,” with an oral hearing date having been canceled after the Board was advised of the impending settlement.
Although apparently a first for AIA proceedings, similar situations occurred with some frequency in interferences where the remaining issue after one party exited was patentability of the claims of the remaining party, rather than priority of invention. In the aftermath of INTERTHINX’s exit, oral hearing for only the patent owner was set for 12/3/13. Take away lesson: settlement between the parties may come too late to end an AIA proceeding.
Interthinx, Inc. v. Corelogic Solutions, Inc. notwithstanding, 16 cases were successfully terminated by settlement in December: CBM2013-00048; CBM2014-00007; IPR2013-00028, -00338, -00060, -00064, -00065, -00066, -00068, -00339, -00341, -00344, -00406, and -00409; and IPR2014-00101 and -00102. None was seemingly as far along in the process as was CBM2012-00007.
Recent Refusals to Institute
The PTAB has refused to institute 61 proceedings, the most recent denials occurring in December in IPR2013-00338, -00348, -00349, -00354, -00360, -00361, -00393, -00394, -00397, -00398, -00474, -00489, and -00581.
Seven of the most recent 13 denials were in connection with petitions filed by Apple and based on the one year bar of 35 U.S.C. § 315(b). See, e.g., Apple Inc. v. Virnetx, Inc., IPR2013-00348, Paper No. 14, entered December 13, 2013.
Five of those recent 13 denials were based on a 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). A sixth denial, SAS Institute, Inc. v. ComplementSoft, LLC, IPR2013-00581, Paper No. 15 (entered December 30, 2013), was based on both a failure to satisfy the threshold and under the provisions of 35 U.S.C. § 325(d). The latter provision was applied because “the grounds are based on substantially the same prior art and arguments as set forth in IPR213-00226.” 35 U.S.C. § 325(d) provides in the concluding sentence: “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.”
Extensions of Time
In Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00347 (Paper No. 18, entered December 23, 2013) (Judges Lee, Cocks and Zecher), the Board demonstrated its reluctance to endanger the 1-year time period for completion specified in 35 U.S.C. § 316(a)(11), absent exceptional circumstances. Petitioner’s expert witness was diagnosed with cancer, underwent surgery, and was scheduled for several weeks of chemotherapy and radiation treatment. The Petitioner had requested an approximately 12 week extension for each of the due dates set in the scheduling order that followed institution of this IPR on November 26, 2013, including the final hearing scheduled for June 19, 2014, on the theory that even a 12 week delay in the hearing date would still give the Board sufficient time to generate it’s opinion prior to the November 26, 2014 anniversary date. The patent owner did not oppose the request. The Board was unwilling to make a 12 week adjustment but was willing to make a 5 week adjustment, moving the hearing date to July 25, 2014. In the Board’s words:
. . . the “up to six months” extension potentially available under 35 U.S.C. § 316(a)(11), for good cause, has a high bar, and likely would not apply if the situation can be resolved reasonably in another way. It is premature to be contemplating an extension under 35 U.S.C. § 316(a)(11), before Petitioner has attempted other ways to respond to the circumstance.
The Board noted, for instance, that Petitioner may, with a much shorter extension, attempt to locate another expert who would be willing to present the same testimony, despite Petitioner’s protestations that this may unnecessarily add to Petitioner’s costs (given that the ill expert may recover). The Board indicated that:
Petitioner is free to … depend on [the ill expert] getting well enough to be cross-examined at an appropriate time according to a revised schedule including the five-week extension. In that case, however, Petitioner will have made a litigation choice, and assumed the risk of events not proceeding according to plan.