Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 19
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Federal Circuit Decision
· PTAB Decisions
Ongoing Tally of Filed IPR and CBM Petitions
In re Rambus
In Inter Partes Reexamination numbers 95/000,166 and 95/001,122, Patent owner, Rambus Inc. appealed the PTAB decision that its claims were anticipated by a Bennet patent. Rambus argued that the Bennet patent did not disclose a “value that is representative of an amount of time to transpire after which the memory device outputs the first amount of data.” Micron Technology, Inc., the requestor in the reexamination, moved to withdraw from the case after oral argument. The Federal Circuit granted the motion to withdraw, but noted that a live controversy remained because Rambus had the right to appeal the Board’s rejection of its claims. Micron’s arguments were withdrawn, and the PTO did not seek to intervene. The Federal Circuit analyzed the Board’s decision and reversed it as unsupported by substantial evidence.
Micron argued before the Board, and the Board agreed, that the Bennet patent included a specific known time. The Bennet specification shows the wait time in clock cycles and the Board held that the cycles are specific, known times and anticipate the ‘916 patent. Rambus argued, and the Federal Circuit agreed that the Bennet figures showed a representation of one source of delay of data transfer, but that number of clock cycles and other factors in the Bennet patent are unknown. The Federal Circuit noted that the Bennet patent showed “one factor that may affect the amount of time that passes before data is transferred but it does not represent that time,” and reversed the Board’s decision of anticipation.
Selected PTAB Decisions:
International Flavors & Fragrances Inc. v. The United States Of America, As Represented By The Secretary Of Agriculture., IPR2013-00124. The PTAB allowed the amendment of 18 or 19 claims in the United States’ motion to amend. Paper 12.
International Flavors petitioned for inter partes review of the ‘016 patent, owned by the United States. Patent owner did not file a Patent Owner Response, the IPR was instituted and the patent owner filed a Motion to Amend. Petitioner did not oppose the Motion to Amend. The parties confirmed that they “did not intend to file any additional substantive papers, and would not request an oral hearing,” and the Board issued a final written Decision.
The patent owner proposed nineteen substitute claims. Substitute claims (1) may not enlarge the scope of the original claims, (2) must be supported by the original written description, and (3) must be patentable over the prior art in general.
(1) The proposed claims included all the limitations of the original claims with an additional limitation. Therefore the Board found that “none of the substitute claims impermissibly enlarges the scope of the original claims.”
(2) The patent owner showed where the original written description in the specification supported the substitute claims including the new limitations and the Board found written description support in the “application as filed.”
(3) The patent owner provided several publications and an expert declaration as to the level of ordinary skill in the art and the non-obviousness of the proposed claims. The Board found that the prior art did not provide a reason to modify to arrive at the substitute claims and did not show a reasonable expectation that the modifications would have the desired effect. The board found the 18 substitute claims non-obvious and concluded that the preponderance of evidence supported patentability of 18 of the substitute claims.
The remaining proposed substitute claim included an additional limitation which the Board concluded was inherently in the prior art. Since “the realization of a new benefit of an old process does not render that process patentable,” the Board concluded that the preponderance of the evidence did not support the patentability of the final proposed substitute claim.
K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203.
The Board granted patent owner Escort’s motion to present the live testimony of the inventor, Steve Orr at oral argument, with some restrictions. Escort argued that Orr is not an expert witness, but a fact witness as to the dates of his inventive activities which could remove the asserted prior art references. As such his credibility and candor as a witness are at issue and Escort argued that live testimony is warranted to allow the Board to consider his demeanor. Paper 28.
Petitioner, K40 Electronics, opposed the motion for live testimony as a motion for extraordinary relief “devoid of the required showing of entitlement to that relief,” and argued that it would give Escort a “second bite at the apple,” and create a de fact rule allowing live testimony is such cases. K40 also argued that Orr’s testimony must be corroborated to remove the prior art references as it has “long been held that an inventor’s allegations of earlier invention alone are insufficient.” Finally K40 “reject[ed] Escort’s offer to cross-examine Mr. Orr for a second time during oral argument as a “theatrical exhibition” that would “serve no other purpose but to provide Escort a renewed opportunity for redirect testimony.” Paper 29.
The Board granted Escort’s motion to present the live testimony because the witness’ demeanor is “critical to assessing credibility” and Orr is the principal fact witness whose testimony may be case-dispositive. The Board disagreed that this allowance created a “de facto” rule and “envisions that live testimony will be necessary only in limited circumstances.” The Board limited the scope of the testimony to cross-examination and redirect. Paper 34.
K40 petitioned for rehearing, arguing that Orr’s demeanor can be seen on the existing video of his testimony which K40 voluntarily secured at its own expense in “anticipat[ion] that Mr. Orr’s demeanor may be of interest to the Board.” K40 noted that it does not intend to cross-examine Orr and that Escort, as movant must “explain the inadequacy of the existing video record of Mr. Orr’s demeanor,” which it did not, and suggested that the Board overlooked the existence of the video when granting Escort’s motion. K40 requested either “(1) confirmation that K40’s intention was misapprehended or (2) clarification from the Board that the Board is ordering K40 to perform a second cross-examination, independent of the existing video record.” Paper 35.
The Board granted K40’s request in part stating that it had considered the video of Mr. Orr and that it had not ordered K40 to cross-examine Mr. Orr, but had offered an opportunity to do so. Given the new information that K40 had no further questions for Orr, the Board modified its order and limited Orr’s live testimony to 30 minutes of direct testimony (strictly limited in scope to his declaration testimony), followed by 30 minutes of cross-examination (optional), and redirect will be at the discretion of the Board. The Board will also allow the submission of 30 minutes of the video recording by K40. Paper 36.
Synopsys, Inc. v. Lee, IPR2012-00042
Synopsys filed declaratory judgment action in the Court of Appeals for the Federal Circuit challenging the USPTO practice of partially granting petitions for inter partes review and issuing final written decisions reaching on some of the claims asserted in the petition for IPR. In September 2012, Synopsis petitioned for inter partes review of Mentor Graphics’ ‘376 patent challenging claims 1-15 and 20-33 as invalid. The Board instituted IPR as to claims 1-9, 11, 28, and 29 and declined IPR as to claims 10, 12-15, 20-17, and 30-33. In February 2014, the Board issued a final written decision cancelling claims 5, 8, and 9, not cancelling claims 1-4, 6, 7, 11, 28, and 29, and not providing a decision on the non-instituted claims of the petition.
Synopsys does not seek review of the decision to institute or deny the IPR, but challenges the UPTO’s process as contrary to the statute. Synopsys argues that 35 U.S.C. § 314(a) permits the Director to institute IPR as a whole if there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition,” noting that there is no provision in the statute to institute IPR as to subsets of the challenged claims. Synopsys argues that even if IPR is instituted as to a subset, 35 U.S.C. § 318(a) requires the Board to issue “a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” which would include the non-instituted claims.
Synopsys requests the Federal Circuit declare 37 C.F.R § 42.108, which authorizes partial grant of IPR, invalid and unlawful; declare the Board’s policy and practice of partial IPR and final written decisions on a subset of the challenged claims unlawful, order the Director and Board to grant or deny institution of IPR as a whole; order the board to issue final written decisions on all challenged claims in an IPR, and to institute IPR and provide final written decision of all claims challenged by Synopsys in its IPR.
We will continue to report on developments in this case as it progresses.