Institution Granted-In-Part Where Patent Not Entitled to Earlier Filing Date IPR2016-00061

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Takeaway: The written description requirement is not satisfied by subject matter that is not disclosed but would be obvious over what is disclosed.

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo.

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Institution Granted Where Claims Not Entitled to Earlier Priority IPR2016-00061

Takeaway: The written description requirement is not satisfied by “subject matter which is not disclosed but would be obvious over what is expressly disclosed.”

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8 of the ’593 Patent. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo. Continue reading

Final Written Decision Finding One Claim Indefinite, and Others Unpatentable, IPR2014-00365

Takeaway: If a challenged claim is found to be indefinite in an IPR, it is likely the Board will not be able to determine whether it is unpatentable based on prior art.

In its Final Written Decision, the Board determined claims 1-3, 5, 8-14, 16-19, 22, and 24 of the ’966 Patent are unpatentable, but was unable to determine the unpatentability of claim 23 because it is indefinite. The ’966 Patent describes a headphone set with “speaker headphone assemblies” on opposite ends of a headband that allow for two speakers: an exterior, outward-facing speaker for public listening, and an interior, inward-facing speaker for personal listening. Continue reading

Final Written Decision Canceling all Challenged Claims and Denying Entry of any Substitute Claims IPR2014-00242

Takeaway: To demonstrate written description support for proposed substitute claims in a motion to amend, a patent owner should provide explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole; citations to portions of the original disclosure alone would be insufficient.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend as to the request to cancel claims 1-3, 5, and 6 of the ’047 patent. However, the Board denied the Motion to Amend as to the request to add proposed substitute claims 7-11. Continue reading

Final Written Decision (Motion to Amend) IPR2014-00216

Takeaway: Arguing that a prior art reference is not enabling because the apparatus disclosed in the reference does not work about half the time is likely to be unpersuasive.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1 and 22 of the ’053 patent are unpatentable. The Board also denied Patent Owner’s Motion to Amend. Continue reading

Final Written Decision CBM2014-00020

Finding All Claims Unpatentable

Takeaway: The recitation of a routine business practice or the presence of tangible objects in a challenged claim does not preclude a finding that the claim is patent ineligible for reciting an abstract idea.

In its Final Written Decision, the Board found that Petitioner had “shown by a preponderance of the evidence that claims 1-67 of the ’137 patent are unpatentable under 35 U.S.C. § 101 and unpatentable under 35 U.S.C. § 112, first paragraph, for lack of written description.” Continue reading

Denying Request for Rehearing IPR2014-01533

Takeaway: It is petitioner’s burden to establish in the petition that a prior art reference constitutes prior art, and when relying upon an earlier priority date, the petition must establish that the prior art patent is entitled to the benefit of that earlier date.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of two asserted grounds of unpatentability. The Board had denied institution of the asserted grounds based upon the Jeffers and Campbell references because Petitioner failed to demonstrate that the references were prior art to the claims of the ’749 patent. Continue reading

Final Written Decision CBM2014-00006

Takeaway: To prevail on an argument that a patent claim is not adequately supported by the written description in the specification, the petitioner must prove that the written description does not “reasonably convey[ ] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”

In its Final Written Decision, the Board concluded that claims 25-29 of U.S. Patent No. 7,203,752 are unpatentable. The ’752 patent relates to using location-based services over mobile wireless networks and, in particular, to a “subscriber profile” that includes a description of the applications that are permitted to receive location information and under what conditions. Continue reading

Final Written Decision IPR2013-00292; IPR2013-00293; IPR2013-00294; IPR2013-00295

Finding all challenged claims unpatentable and denying Motion to Amend

Takeaway: Corroborating evidence concerning the date of conception must include independent, third-party evidence. Documentary evidence that is authenticated by inventor testimony is insufficient to corroborate inventor testimony regarding a date of conception.

In its Final Written Decision, the Board found that claims 1-52 of the ’403 patent are unpatentable and denied Patent Owner’s Motion to Amend. The subject matter of the ’403 patent relates to a graphical user interface that organizes content from a variety of information sources into a grid of tiles, each of which can refresh its content independently of the other. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00322

Takeaway: A patent owner must explain how each added limitation in a proposed substitute claim of a motion to amend finds written description support, and that requirement can become more burdensome depending on the amount of revisions made in the substitute claim.

In its Final Written Decision, the Board found that Petitioner established that claim 1 is unpatentable but failed to establish the unpatentability of claims 2, 4, 5, 8, 9, 16, 19, and 20. The Board also denied Patent Owner’s Motion to Amend and Petitioner’s Motion to Exclude Evidence.

The ’003 patent concerns wearable medical devices “used to provide therapy to the patient, as well as to collect and transmit information about the patient, the device, and the patient’s interaction with the device, to a remote location.” The proceeding was instituted based on anticipation of claims 1, 2, 4, 5, 8, 9, 16, 19, and 20 of the ’003 patent by the prior art reference Owen.

Turning to claim construction, the Board noted that “claim terms in an unexpired patent are interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear.” Unless a special definition is set forth in the specification “with reasonable clarity, deliberateness, and precision,” the terms are given their ordinary and customary meaning.  The Board first considered the parties’ arguments with respect to the construction of the terms “patent compliance data” and “patient compliance and use data,” finding neither persuasive and maintaining the constructions provided in the Decision on Institution.  In particular, the Board construed both terms to mean “data indicating whether a patient has followed instructions for use.”

The Board then addressed the means-plus-function limitations and provided a construction for the “means for monitoring and storing” limitation in claims 4 and 19. Petitioner argued that the corresponding structure in the specification that performs the “monitoring” and “storing” functions are a medical device and memory.  Patent Owner did not disagree.  Thus, the Board adopted the agreed-upon construction.  Although other proposed claim constructions were argued by the parties, the Board did not construe them, finding them not to be material to its decision.

With respect to the alleged unpatentability of claim 1, the Board noted that Patent Owner did not argue the patentability of the claim in its Response or subsequent papers. The Board was persuaded by Petitioner’s unrebutted evidence that Owen anticipates the subject matter of claim 1.

With respect to the remaining claims (2, 4, 5, 8, 9, 16, 19, and 20), the question of patentability was primarily based upon the claim limitation “patient compliance data,” which is found in each of those claims. Petitioner argued that a passage in Owen describing several types of information satisfied the limitation.  Addressing each type of information in turn, the Board agreed with Patent Owner, finding that Petitioner failed to identify where Owen discloses “whether a patient has followed instructions” as required by the limitation according to the Board’s construction.  Thus, the Board found that Petitioner had not shown that Owen discloses “patient compliance data,” and therefore, that Owen does not anticipate claims 2, 4, 5, 8, 9, 16, 19, and 20.

The Board then addressed Patent Owner’s contingent Motion to Amend, in which it proposed claim 36 as a substitute for claim 1. The Board explained that an inter partes review proceeding is neither an examination nor a reexamination proceeding.  Rather, Patent Owner “bears the burden of proof in demonstrating adequate written description support and patentability of the proposed substitute claims over the prior art, and thus entitlement to add these proposed substitute claims to its patent.”

With respect to the alleged written description support for substitute claim 36, Patent Owner provided a long series of citations to the ’003 patent and the provisional application to which it claims priority, and did not cite to its expert for support. Petitioner argued that Patent Owner’s Motion to Amend was not sufficient in this regard.  Patent Owner, in its Reply, argued that the discussion was sufficient to demonstrate possession of the subject matter of the claim to a person of ordinary skill in the art.  Patent Owner also submitted a declaration of its expert with the Reply in which “a more detailed listing of support” was provided.

The Board agreed with Petitioner that Patent Owner failed to show written description support for the proposed claim. In particular, the Board noted that the string citations were “little more than an invitation . . . to peruse the cited evidence and piece together a coherent argument.”  The string citations were particularly deficient in light of the extensive revisions to claim 1, with Patent Owner seeking to add hundreds of words to claim 1, more than tripling its length.”  Patent Owner’s attempt to address the deficiency in its Reply was found to be too late.  “A Reply affords the moving party an opportunity to refute arguments and evidence advanced by the opposing party, not an opportunity to improve its position.”  Also, Patent Owner failed to explain why the new evidence in the Reply could not have been presented with its Motion.

Nevertheless, the Board found that the reply evidence was still insufficient. In particular, the expert declaration opined that a person of ordinary skill in the art would have appreciated that the inventors had possession and provided citations to the provisional application.  However, the Board found that the declaration did not “explain adequately the factual basis on which he reaches that conclusion.”  Thus, the Board found that Patent Owner failed to demonstrate that the proposed claim has the required support and did not reach the question of the claim’s patentability over the prior art.

Finally, the Board addressed Petitioner’s Motion to Exclude portions of cross-examination testimony. First, the Board noted that Petitioner made blanket requests to exclude, for example, “all evidence it objected to as irrelevant or exceeding scope.”  The Board refused to consider any evidence that was not particularly addressed in the Motion to Exclude, and the only evidence that the Board relied upon in its decision was not specifically addressed in the Motion.  Therefore, the Board denied the Motion.

Respironics, Inc. v. Zoll Medical Corporation, IPR2013-00322
Paper 46: Final Written Decision
Dated: September 17, 2014
Patent: 6,681,003 B2
Before: Bryan F. Moore, Brian J. McNamara, and Scott E. Kamholz
Written by: Kamholz