Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 17
April 25, 2014
In This Issue
· PTAB Decisions
· Recent Refusals to Institute
Ongoing Tally of Filed IPR and CBM Petitions
Since September 16, 2012, (through March 31, 2014), 985 petitions have been identified in the PTAB’s listing of proceedings for inter partes review (“IPR petitions”) and 147 petitions for post grant review against certain patents directed to covered business methods (“CBM petitions”).
PTAB Final Written Decisions:
ABB Inc. v. Roy-G-Biv Corporation, IPR2013-00074 and IPR2013-00286 (April 11, 2014)(“ABB One”); and ABB v. Roy-G-Biv Corporation, IPR2013-00062 and IPR2013-00282 (“ABB Two”), involving related patents. In all four of the proceedings, the Board concluded that the petitioner had not met its burden to prove by a preponderance of the evidence that any of the claims of either patent were unpatentable.
Four petitions were filed by ABB against Roy-G-Biv, resulting in two decisions. The Board joined the two IPRs that comprise ABB One, which involve US Patent No. 8,073,557 and the same parties and the Board joined the two petitions that involve U.S. Patent No. 6,516,236 into ABB Two.
In both ABB One and Two, Patent owner filed a response, along with an expert declaration. In the Reply, Petitioner filed, for the first time, an expert declaration.
The Patent Owner also attempted to swear behind the two references at issue (in both proceedings) by showing prior conception and diligence to the constructive reduction practice date. The Board concluded that Patent Owner did not submit sufficient evidence to establish the proposed invention dates and failed to submit sufficient corroborating evidence. Thus, the Board turned to the merits of the rejections.
In both cases, the Board concluded that the Petitioner did not establish that the prior art references rendered obvious the claimed invention. The Board credited Patent Owner’s expert, indicating that the Petitioner’s experts did not squarely address the issues raised by Patent Owner’s expert regarding Patent Owner’s position that certain limitations were not taught by the prior art.
Also of note, in both proceedings, Patent Owner moved to exclude certain arguments made by Petitioner in its reply as well as portions of Petitioner’s expert testimony, arguing that the offending material advanced new positions. Because the Board did not rely upon the allegedly new arguments, the Board dismissed the motion as moot. However, the Board noted that the motion to exclude evidence was not the proper vehicle to resolve the dispute regarding reply arguments/evidence exceeding the proper scope of a reply. Rather, the parties should contact the Board in the event this issue comes up to determine how to address the same.
Recent Refusals to Institute
The PTAB refused to institute 22 proceedings in January and February. Many of the IPR’s were refused institution based on the failure of the petitioner to meet the standard set forth under 35 U.S.C. §314(a), including IPR Nos. 2013-00491;2013-000492; 2013-000486; 2013-000490; 2013-000551; 2013-000528; 2013-000510; 2013-000494; 2013-000458; 2013-000460; 2013-000504; 2013-000443; 2013-000464; 2013-000439; and 2013-000470. The PTAB refused to institute CBM 2013-00047 for failure to meet the standard set forth under 324(a).
Of note, the Board denied IPR Nos. 2014-00008, 11, 12 and 13 in a single decision (IPR2014-0008). The Board noted that all of the IPR proceedings instituted by Samsung Electronics involved a family of patents owned by Fractus and ruled all petitions were time-barred under §315(b). Petitioner argued that the complaints at issue were filed in 2009, before the AIA was enacted. However, the Board concluded that the AIA did not exempt complaints that were filed before the AIA was enacted and continued to apply the 315(b) one year bar based on the date the complaint was served, regardless of whether the complaint was served before the AIA was passed.
The Board, in IPR2013-00526, Tandus Flooring v. Interface Inc., refused to institute a proceeding where the Patent Owner, in response to the Petition, disclaimed the claims placed at issue by the Petitioner.
The Board, in IPR2013-00513, Apex Medical Corp. v. Resmed LTd., refused to institute a proceeding where a Reissue patent issued after the petition was filed that was directed to the underlying patent. The Board ruled that, since the patent was surrendered upon issuance of the Reissue patent, the claims of the underlying patent were no longer an issue.