Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 16
February- March 2014
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Final Written Decisions
Ongoing Tally of Filed IPR and CBM Petitions
Selected PTAB Final Written Decisions:
Interthinx, Inc. v. CoreLogic Solutions, CBM2012-00007 (January 30, 2014);(Tierney, Chang, and McNamara)
The Board retained jurisdiction over this matter and issued a Final Written Decision, which involves an expired patent, despite the parties having settled the matter. The Board noted that the pending litigation resulted in a jury verdict and judgment of non-infringement and no invalidity. The parties thereafter settled and did not appeal the district court judgment. The Board first made clear that claim preclusion and issue preclusion do not apply because the Board “reviews the patentability of a claim, rather than its validity, and applies a preponderance of the evidence standard” as opposed to the district court’s application of the higher clear and convincing standard. Opinion at p. 6. The Board concluded that the involved claims (directed to appraising real estate by developing a model to predict a value and an error model to assess the error range around the predicted value) failed to recite patent eligible subject matter under 35 U.S.C. §101 because the claims are directed to an abstract concept and do not transform these ideas into patent eligible applications. On alternative grounds, the Board also concluded that the claims at issue were anticipated by or obvious over the prior art. Of note here is the Board’s refusal to exclude the references that the patent owner argued were not publicly accessible because the patent owner did not move to exclude the references under 37 C.F.R. §42.364(c).
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00002 (January 23, 2014) (Lee, Change, and Zecher)
The Board found all claims at issue (claims 1, 3-6 and 9-18) unpatentable under 35 U.S.C. § 103(a). The Board rejected the patent owner’s argument that the Board exceeded its statutory authority to review patent claims that were not directed to a covered business method. The Board disagreed, concluding that the statute was not so narrowly drafted, citing Section 18(D)(1) of the AIA, which defines the “covered business method patent” to mean “a patent that claims a method or corresponding apparatus for performing data processing ….” Op at p. 5 (emphasis in original). Had Congress “intended to limit the availability of the covered business method patent review on a claim-by-claim basis, as urged by Progressive, it could have used the term “claim” rather than “patent.” Op. at page 6.
The Board analyzed the art of record and concluded that the claims were obvious.
Berk-Tec, LLC v. Belden Inc., IPR2013-00057 (March 18, 2014) (Judges Lee, Cocks, and Rice). The Board instituted the proceeding on claims 1-6 of U.S. Pat. No. 6,074,503. Each challenged claim is direct to a method of producing a cable, with claims 5-6 being added via an Ex Parte Reexamination Certificate issued on October 5, 2010. The final decision determined that claims 1-4 unpatentable, and claims 5 and 6 not unpatentable. In addition, the Board denies Belden’s motion to exclude a reply declaration and reply evidence submitted by Berk-Tek.
Of note, the Board entertained unauthorized briefings filed by Belden directed to excluding the Revised Reply brief because it allegedly exceeded the appropriate scope. The Board retroactively issued an Order (Paper No. 39, entered October 31, 2013) which authorized Belden to include in its motion the briefing. The Board denied Belden’s motion since the non-excised portions of the reply papers were not considered by the Board.
The Board instituted the trial as to claims 1-4 of the U.S. Patent No. 7,941,357. The Patent Owner filed a response and a substitute motion to amend, requesting cancellation of claims 1-4 and the addition of proposed substitute claims 5-8. The Board instituted the CBM review. The Board determined that a patent owner response is an opposition to the petition; and therefore, should address any ground for unpatentability not already denied with respect to the claims upon which a trial is instituted. The Board determined that Markets-Alert’s response was not an opposition because it did not respond to the petition because it did not address the grounds for unpatentability with respect to claims 1-4 (Patent Owner cancelled these claims). The Patent Owner only addressed proposed claims 5-8.
The Board granted Patent Owner’s request to cancel claims 1-4 because this request was not based on any contingency. During oral argument, counsel for Markets-Alert indicated that Markets-Alert intended the cancellation of claims 1-4 to be contingent upon a Board determination as to the patentability with respect to claims 1-4; however, counsel for Markets-Alert conceded that there was no explicit indication of contingency.
Denso Corp. v. Beacon Navigation GmbH, IPR2013-00026 (March 14, 2014),
The Board found all of the claims at issue in the inter partes review unpatentable over the prior art. The Board’s decision generally turned on its interpretation of the term “position”, which was included in all of the claims either directly or through claim dependency. Of note, Beacon argued that the inter partes review should be dismissed because petitioners failed to identify all real parties-in-interest. In particular, Beach argued that Denso and Clarion were co-defendants with Mazda Motor of America, Inc. and Nissan Motor Co. Ltd, respectively, in related litigation. However, the Board was not persuaded, holding that the mere fact that parties are co-defendants or concurrent defendants in litigation does not make them real parties-in-interest.
CBS Interactive Inc. v. Helferich Patent Licensing, LLC, (March 3, 2014) IPR2013-00033 (Judges Lee, Turner and Chang).
The Board concluded that all claims at issue were unpatentable. The Board denied Patent Owner’s motion to substitute certain involved claims for failing to sufficiently demonstrate the patentability of the substitute claims.
Of note, the Board discussed the adequacy of the inventor’s declaration and other supporting evidence for antedating a prior art reference, and the reasons for denying the Patent Owner’s motion to amend certain of the patent claims.
With respect to the prior art antedating issue, the Board held that an inventor’s testimony, standing alone, without additional independent corroboration, is insufficient to prove conception prior to the critical filing date of the applied prior art.
With respect to the motion to amend, the Board discussed the Patent Owner’s obligations when submitting a motion to amend the claims. In particular, the Board pointed out that when new claim features are introduced in the substitute claims, the Patent Owner should: (i) provide claim constructions for the terms even if the Patent Owner agrees with the Board’s claim construction set forth in the Decision to Institute, and (ii) explain whether the Board’s construction applies to the newly added features. The Board further pointed out a reasonable construction of the added features, the Board is unable to determine whether the Patent Owner has demonstrated the patentability of its proposed substitute claims.
With respect to the written description support, the Board stated that the motion to amend must: (i) identify clearly the written description support for each proposed substitute claim, and (ii) the written description support for each proposed substitute claim in any earlier filed priority application in which the earlier filing date is sought, by (iii) providing a copy of the original disclosure (and earlier-file priority application) and citing to specific portions of each to show support for the actual claim language of the substitute claims.
With respect to the patentability over the prior art, the Board noted that the burden of proof is on the Patent Owner to demonstrate patentability of the proposed substitute claims over the prior art. To this end, the Board indicated that the Patent Owner should: (i) identify the closest prior art known to the Patent Owner with respect to the proposed amended claims, (ii) provide both anticipation and non-obviousness analyses, and (iii) in the non-obviousness analysis, the Patent Owner should provide more than only addressing how each prior art reference individually fails to disclose the added features. The Board also indicated that the Patent Owner should (iv) provide evidence as to the level of ordinary skill in the art at the time of the invention including at least some explanation as to why a person with ordinary skill in the art, applying his or her own knowledge and creativity, would not have found the proposed claims obvious.