Greenblum & Bernstein, P.L.C.

REEXAMINATION AND POST-GRANT

PRACTICE GROUP NEWSLETTER

keePing TABs  No. 6

                                                                                                    March  2013   

In This Issue

·   Ongoing Tally of Filed IPR and CBM Petitions

·   Activity at PTAB in February, 2013

·   PTAB denies Petition in Synopsis

·   PTAB  discusses meaning of “technological invention” in context of CBM

Contact Us:

Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Contact Us:

Bruce Stoner
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Contact Us:

Bruce Stoner
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Contact Us:

Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Contact Us:

Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Ongoing Tally of Filed IPR and CBM

On September 16, 2012, the USPTO began accepting petitions seeking to initiate inter partes review proceedings (“IPR petitions”) and petitions for post grant review against certain patents directed to covered business methods (“CBM petitions”). As of February 28, 2013, 167 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. During February 2013, 30 petitions for IPR were filed. For the third straight month, there were no reported petitions for CBM filed.

So far, petitions in 23 proceedings have been evaluated for institution.  In total, 21 trials have been instituted, while two have been denied.  In February, the following 12 trials were instituted: CBM2012-00003, -00010, and -00011, CBM 2013- 00002, IPR2012-00005, -00018, -00019, -00020, -00023, -00033, and -00042, and IPR 2013-00010.  In 11 of these 12, trials were instituted on less than all the grounds for unpatentability asserted by the petitioner.  In both Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, and Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00001 (discussed below) the petition was denied.  See the spreadsheet for dates of institution or denial (click HERE).

Activity at the PTAB in February 2013

     PTAB Denies Petition in Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041

On February 22, 2013, a three judge panel (Medley, Blankenship and Bisk) refused to institute inter partes review as to any of the challenged claims because the panel was not convinced “that there is a reasonable likelihood that at least one of the challenged claims [i.e., 1-14 and 7-20] is unpatentable based on the asserted grounds.” (Op. at 18).

·        Same References As In Ex Parte Examination Not Necessarily an Impediment.  The panel did not reject the petition because “all the references asserted in the petition are the same or substantially the same as prior art considered during prosecution.” (Op. at 8-9).  In this case, the record appeared to indicate that the art at issue was cited regarding a claim limitation that was not in the claims under reexamination now. 

Thus, we are not persuaded that the petition’s arguments regarding Sample ’191 and the challenged claims were previously considered by the Office.  We decline to reject the petition solely on the ground that Sample ’191 was considered by the Examiner during prosecution.

·        Incorporation by reference.  The panel observed (Op. at 9-10) that Sample ‘191 “unambiguously incorporates the entire Chen specification by reference” thereby making Chen part of the anticipatory disclosure “as if it were explicitly contained therein,” citing Telemac Cellular Corp. v. Topp Telecom, Inc. 247 F.3d 1316, 1329 (Fed. Cir. 2001):

·        Obviousness.  Regarding the requester’s obviousness analysis under 35 U.S.C. § 103 (which may have been an effort to avoid the trap of asserting a § 102 rejection only to have the panel conclude that some minor feature was missing), the panel observed (Op. at 13-14) that Petitioner did not “clearly explain the reasoning behind” the “unsupported assertions” that “[a]t a minimum, each challenged claim element would have been obvious to a person of ordinary skill in the art in view of the ’191 patent” (Pet. 11).  The Board found the Petitioner’s conclusory statements lacking sufficient detail at least because the petition: (i) did not comply with 37 C.F.R. § 42.104(b)(4), by specifying where each element of a challenged claim is found in the prior art; (ii) did not comply with 37 C.F.R. § 104(b)(5) by providing the relevance of the evidence supporting the challenge, including identifying the portions of the evidence that support the challenge; (iii) does not clearly point out the differences between the claimed invention and Sample ’191; and (iv) does not explain why a person of ordinary skill in the art would have found the claimed subject matter obvious in spite of those differences. 

·        Other Action Involving the Same Parties.  On the same date, in IPR2012-00042, a petition involving the same parties but a different patent was granted and trial was instituted by the same panel.

·        Case Management.  Although Judge Medley was originally assigned to manage the proceeding, Judge Bisk authored the decision.  As the chart below shows, Judge Medley has the second largest docket based on original assignment of cases;  as predicted, assignment of decision writing responsibility (as distinct from proceeding management) can serve as a way to spread out the work to keep up with filings, while maintaining procedural consistency.

PTAB Denies Petition in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2013-00001: On February 27, 2013, a three judge panel (Lee, Chang and Zecher) held that no trial would be instituted based on proposed rejections involving a patent to Peterson (“the information in the petition does not demonstrate that it is more likely than not that claims 1-59 are unpatentable”) (Op. at 2).  On the same date, in CBM2013-00002, a petition involving the same parties and the same patent, but different prior art, was granted and trial was instituted.

·        Meaning of “Technological Invention” Explored.  The panel engaged in a lengthy discussion en route to determining that method claim 53 is not a “technological invention” under 37 C.F.R. § 42.301(b), avoiding the statutory exception and thus making the patent eligible for a covered business method patent review (Op. at 3-12).

o    The panel noted that the Board may institute the proceeding only for a “covered business method” patent defined by §18(d)(1) of the AIA as:

a patent that claims a method or corresponding apparatus for

performing data processing or other operations used in the

practice, administration, or management of a financial product

or service, except that the term does not include patents for

technological inventions.

o    The panel noted that the legislative history explains the definition of a covered business method patent was drafted to encompass patents “claiming activities that are financial or complementary to financial activity.” 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (Sen. Schumer).  Further, the legislative history appears to exclude only “those patents whose novelty turns on a technological innovation over the prior art and are concerned with a technical problem which is solved with a technical solution and which requires the claims to state the technical features which the inventor desires to protect.” 157 CONG. REC. S1364 (daily ed. Mar. 8, 2011) (Sen. Schumer).

o    The panel stated that a patent needs only one claim directed to a covered business method to be eligible for review.

o    In the present case, the panel determined that the following claim 53 of the ’269 patent relates to how to a “financial service,” stating: “Any one of health insurance, property-casualty insurance, and liability insurance as is recited in claim 53 is a financial product, and the activities recited in claim 53 about the insurance policy together constitute a financial service provide an insurance service.” 

o    Claim 53 also recites three software modules, one of which is repeated below (emphasis added):

(1) an information module “to identify the insurance policy holder and verify an insurance policy parameter of an existing insurance policy of that insurance policy holder in response to data received from the insurance policy holder

through the publicly accessible network and the interface”;

o    Even though software is implicated by claim 53, the panel determined that claim 53 does not satisfy the “technological invention” exception to the covered business method patent review (and, thus, the claim qualifies for the CBM procedure).  The panel stated that “to qualify under the ‘technological invention’ exception to covered business method patent review, it is not enough that the invention makes use of technological systems, features, or components.”  Rather, it must be determined that the patent claim:

1.      recites a technological feature that is novel and unobvious over the prior art, and

2.   solves a technical problem using a technical solution.

The panel disagreed with Progressive’s argument that claim 53 as a whole is directed to technological features.  The panel noted that the “claimed invention as a whole has no other use but to collect, transfer, receive, and process insurance information in the particular manner as specified in the claim” thus there is no technical innovation like a “faster computer and interface.”  The panel noted that the specification also does not describe a “faster computer” or “more efficient interface” but instead “omits detailed instructions on how to assemble and form each of the technical components” which indicates that the “claimed invention is merely conventional and well known to one with ordinary skill in the art.” 

o    The panel noted that an innovation may “depend on and make use of technology, e.g., computer, software, database, or telephone” but the mere inclusion “of those technical components in a claim would not transform those innovations in providing an insurance product and service into a technological invention.” 

o    Thus, the panel concluded “on this record, the subject matter as a whole of claim 53 does not recite a novel and unobvious technical feature.  All of the components as claimed, except the insurance nature of the data being processed, are known and operated in their ordinary and predictable manner” and the panel also concluded that “the subject matter of claim 53 as a whole does not use a technical solution to solve a technical problem.”

Progressive argued that the claimed software modules provide a technical solution to the technical problem (for example, allowing direct verification of insurance policy parameters by a user in real-time without needing an insurance agent).  However, the panel rejected this assertion because the technology useable for implementing the claimed features was generally available and required no technical innovation.

Progressive also argued that “[t]raditionally, it was not possible to service insurance without the assistance of an insurer, agent, or representative.” Prel. Resp. 15:14-16.  However, the panel indicated that these “assertions do not relate to any ‘technical problem,’ but to a mere tradition which took time to change.” 

PTAB Decides Standing Issue in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022.  On  February 2, 2013, a three judge panel (Tierney, Green, and Robertson) denied the Patent Owner’s (Isis) challenge to the Petitioner’s (Ariosa) standing to file the petition.  The panel characterized the issues before it as (Op. at 3-4)

. . . whether filing a Declaratory Judgment of noninfringement in District Court bars Ariosa from later filing a petition for Inter Partes Review under 35 U.S.C. § 315(a), and whether the express mention of a counterclaim of invalidity in 35 U.S.C. § 315(a)(3) mandates interpreting the statute such that raising an affirmative defense of invalidity in response to a compulsory counterclaim of infringement deprives Ariosa of standing to file for inter partes review.

The panel answered both questions in the negative, relying upon Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 96 (1993) for the proposition that: “The affirmative defense of invalidity is tied to the claim of infringement, whereas a counterclaim of invalidity is independent from the claim of infringement, which survives a finding of noninfringement.”

PTAB Trial Section Judges: Docket assignments continue to show a heavy load of cases being assigned to several experienced inter partes APJs, as reflected in the following information drawn from the spreadsheet.