Decision Granting Motion To Expunge Patent Owner’s Motion for Observation Which Commented On Patent Owner’s Own Expert IPR2014-01178, -01297, 01449

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Takeaway: The Board’s rules for inter partes review do not specifically provide a mechanism for a party to provide observations on cross-examination of its own witnesses.

In its Decision, the Board granted Petitioner’s Motion to Expunge Patent Owner’s Motion for Observation. Petitioner’s Response to Patent Owner’s Motion for Observation was also expunged.

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Final Written Decision Upholding The Patentability Of All Challenged Claims IPR2014-00877

Takeaway:  If a party recants on a previously proposed claim construction during oral argument, the Board may elect to adopt the construction proposed during oral argument over the construction proposed by that party previously.

In its Final Written Decision, the Board concluded that the Petition was not successful in showing that claims 1-16 of the ‘688 patent are unpatentable by a preponderance of the evidence.  Petitioner had asserted that the following grounds were applicable to claims 1-16 of the ‘688 patent: (1) anticipation of claims 1-16 under 35 U.S.C. § 102(b) in view of Kolar; (2) obviousness of claims 1-16 under 35 U.S.C. § 103(a) in view of Kolar; and (3) anticipation of claims 1-16 under 35 U.S.C. § 102(b) in view of Wulf.  But the Board was not convinced.

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Final Written Decision Finding Claims Unpatentable CBM2014-00114

Takeaway: When determining whether a reference that was previously before the PTO is “prior art,” the Board will take into account whether patent owner challenged the reference’s status as “prior art” during the prior PTO proceeding.

In its Final Written Decision, the Board determined that the remaining challenged claims (4, 6-8, and 10) of the ’387 Patent are unpatentable, and denied Patent Owner’s Motion to Exclude. The ’387 Patent relates to the conditional trading of securities, such as convertible bond “swaps,” risk arbitrage, and combinations thereof in both listed and over-the-counter markets, via one or more electronic networks. Continue reading

Final Written Decision Finding Claims Obvious Where Prior Art Combination Results in Performance Loss IPR2014-00697

Takeaway: Modifying a known device, using a known method, to achieve a predictable result is obvious, even if one is willing to accept a known loss in performance others sought to avoid.

In its Final Written Decision, the Board found all challenged claims of the ‘627 patent unpatentable as obvious under 35 U.S.C. § 103. The ‘627 patent “discloses an internally grounded feedthrough filter capacitor assembly used to prevent the passage of externally generated electromagnetic interference (‘EMI’) into an electronic device, such as a cardiac pacemaker.” Continue reading

Denying Institution When Challenged Claims Were Disclaimed IPR2015-01234

Takeaway: If a patent owner disclaims the challenged claims prior to institution of trial, such action will not be considered a request for adverse judgment, and it is likely that the Board will deny institution of the petition on the basis of the disclaimers.

In its Decision, the Board denied institution of all challenged claims (38-42, 44, and 45) of the ’492 Patent. Continue reading

Russian Thesis a Printed Publication Over Dissent

Takeaway: Where patent owner does not object to the authenticity or admissibility of evidence submitted by petitioner, the Board may consider statements in the evidence in determining whether a reference was sufficiently accessible to the public to qualify as a prior art printed publication.

In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that claims 9, 14, 21, 26, 35, and 37 of U.S. Patent No. 7,811,421 are unpatentable. The ’421 patent relates to a method and apparatus for high-deposition sputtering of films on semiconductor substrates.

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Final Written Decision Finding All Claims Not Unpatentable IPR2014-00785

Takeaway: Obviousness requires more than a showing that each element of a claim was known in the prior art; it also requires a reason that would have prompted an ordinary artisan to combine the prior art in the way the claimed invention does.

In its Final Written Decision, the Board held that Petitioner had not shown by a preponderance of the evidence that claims 1-10 of the ’591 patent are unpatentable. The Board denied Petitioner’s Motion to Exclude. Continue reading

Granting Motion to Stay Reexamination where Board is Considering a Motion to Consolidate IPR2015-00860

Takeaway: The Board will likely grant a motion to stay a co-pending reexamination where a motion to consolidate the reexamination is currently being considered by the Board.

In its Order, the Board granted Petitioner’s motion to stay the co-pending ex parte reexamination control no. 90/013,385 (“the ’385 reexamination”) of the ’601 patent “pending the panel’s consideration of Ford’s prior request for authorization to move to consolidate the ’385 reexamination with one of IPR2015-00860 or IPR2015-00861.”

Patent Owner objected to the requested stay, arguing that the ’385 reexamination was “at a final stage, and the Examiner in charge of the reexamination proceeding likely soon will issue a Reexamination Certificate.” A stay, Patent Owner argued, would likely “interfere with the issuance of the Certificate.”

35 U.S.C. § 315(d) and Rule 42.122(a) provide the Board with the authority to stay a reexamination proceeding. In considering Patent Owner’s arguments against the stay, the Board indicated that the argument actually weighs in favor of granting the stay. In this regard, the ’385 reexamination forms the basis of Petitioner’s requested consolidation. The Board’s “consideration of whether to consolidate the ’385 reexamination with one of the involved inter partes review proceedings may be rendered moot should a Reexamination Certificate issue in the ’385 reexamination.”

Accordingly, the Board found it prudent to temporarily stay the ’385 reexamination to provide the Board with time to consider whether the ’385 reexamination should be consolidated with one of the two inter partes review proceedings. All time periods for filing papers in the ’385 reexamination were tolled while the stay remains in place.

Ford Motor Company v. Signal IP, Inc., IPR2015-00860, 00861
Paper 11: Order Staying
Ex Parte Re-examination Control No. 90/013,385
Dated: October 1, 2015
Patent: 6,775,601 B2
Before: Josiah C. Cocks, Mitchell G. Weatherly, and Charles J. Boudreau
Written by: Cocks
Related Proceedings: Re-examination Control No. 90/013,385

Final Written Decision Discussing Whether Witness Must Be Skilled in the Art as of Critical Date IPR2014-00642

Takeaway: Although witness testimony about the level of skill in the art as of the filing date of the challenged patent is relevant, the witness need not have acquired that knowledge as of that date.

In its Final Written Decision, the Board found that Petitioner showed by a preponderance of the evidence that all challenged claims of the ’044 patent are unpatentable. The ’044 patent “relates to a method and apparatus for obtaining cells from multiple layers of epithelium by abrasion and without laceration,” disclosing in a preferred embodiment “a brush having bristles of sufficient stiffness to allow them to dislodge and sweep up cells from superficial, intermediate, and basal layers of epithelium, and to penetrate the basement membrane underlying the epithelium to reach the submucosa, without having to resort to the dangers of incisional-based biopsy.”

With regard to claim construction, the Board stated that no part of its Decision “relies on any specific construction of any claim term,” and therefore “no claim construction is necessary and the claims are accorded their broadest reasonable interpretation consistent with the specification.”

As a preliminary matter, the Board addressed a number of evidentiary issues applicable to both asserted grounds of unpatentability. First, Petitioner contended that a device disclosed in the Parasher Article (Ex. 1004) was “inherently capable of collecting a tissue sample as claimed.” The Board disagreed, finding that the Petition failed to identify “an explicit disclosure that the brush used for the experiments described in the Parasher Article was the Parasher brush.” Petitioner’s attorney argument was insufficient; therefore, the Board gave “no weight to the Parasher Article in [its] analysis.”

Second, the Board addressed Petitioner’s declaration of Dr. Michel Kahaleh. In particular, Petitioner cited to Dr. Kahaleh’s declaration in support of its argument that the Parasher brush “is capable of collecting a specimen that includes cells from tissue located below the surface of the epithelium.” The Board was not persuaded, citing to Dr. Kahaleh’s deposition testimony that contradicted Petitioner’s assertions.

With regard to Dr. Kahaleh’s qualifications, the Board disagreed with Patent Owner’s contention that Dr. Kahaleh was not qualified for not being a pathologist. In this regard, the Board was persuaded that Dr. Kahaleh had experience that was relevant to the field of the invention. Moreover, the Board disagreed with Patent Owner’s arguments that Dr. Kahaleh’s testimony should be given little weight because he did not have the relevant knowledge as of May 2001. The Board distinguished the Federal Circuit decision, Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986), and PTAB decision, Schott Gemtron Corp. v. SSW Holding Co., Case IPR2013-00358, slip op. at 18 (PTAB Aug 20, 2014) (Paper 106), that were relied upon by Patent Owner. In particular, the Board found that “[a] witness must provide testimony about the level of skill in the art as of the critical date; however, the witness need not have acquired that knowledge as of the critical date.”

Turning to the prior art, the Board was persuaded that Petitioner showed by a preponderance of the evidence that Parasher anticipated challenged claims 1–8, 11–17, 23–28, 32, and 35–39. In particular, the Board disagreed with the implication of Patent Owner’s contentions that Parasher “must disclose such capability [of the claimed brush] in the words of the ’044 patent and with Patent Owner’s characterization of the reference.” Instead, “[t]he proper inquiry is what a person of ordinary skill in the art would understand as the capability of Parasher’s brush.” The Board was persuaded that Parasher disclosed a brush as claimed in the ’044 patent.

The Board next analyzed the parties’ reliance upon the testimony of Patent Owner’s expert Dr. Fromowitz. First, the Board found the testimony relied upon by Patent Owner not to be relevant to its consideration. However, the Board found that Dr. Fromowitz’s testimony instead supported “Petitioner’s contention that Parasher’s device dislodges cells from not only the surface, but also from within the epithelium,” which was also consistent with the Board’s analysis of the reference.

With respect to alleged obviousness of claims 9, 10, 29, and 20 over Parasher in view of Markus, the Board found that Patent Owner had not effectively challenged any material fact. In particular, Patent Owner relied upon its arguments regarding Parasher, which as discussed above, were rejected by the Board. Patent Owner also raised during oral hearing a new argument that the references could not be combined. The Board agreed with Petitioner’s objection, Paper 23, and did not consider the new argument.

In the end, the Board found all challenged claims to be unpatentable.

U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00642
Paper 25: Final Written Decision
Dated: October 15, 2015
Patent: 6,258,044 B1
Before: Phillip J. Kauffman, Scott A. Daniels, and Barry L. Grossman
Written by: Daniels
Related Proceedings: CDx Diagnostics, Inc. v. U.S. Endoscopy Group, Inc., Case No. 1:13-cv-5669-NSR (S.D.N.Y.); IPR2014-00639 (challenging U.S. 6,676,609 B1, the “’609 patent”); IPR2014-00641 (challenging U.S. 7,004,913 B1, the “’913 patent”).