Takeaway: The Board denied institution of inter partes review for reasons of administrative efficiency where the Petition presented at least 127 different grounds of unpatentability and failed to fully develop any of the grounds.
In its Decision, the Board denied institution of an inter partes review of the ’269 Patent. The ’269 Patent relates to methods of synthesizing nondestructive examination data to be used for training data analysts and/or testing inspective techniques.
The Board cited to 35 U.S.C. § 312(a)(3), which states that, to be considered, a petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” Then, the Board assess whether the Petition met these requirements. First, the Board found that the original Petition failed to include any express claim construction for individual claim terms. The Board required correction. In the Corrected Petition, Petitioner failed to cite any portion of the specification of the ’269 Patent or provide any other evidence as to why the proffered constructions reflect each term’s ordinary and customary meaning. Second, the Board found that the Petition listed, in a summary table, 68 grounds of unpatentability that rely on one or more of fourteen references. Many of the 68 grounds of unpatentability were actually multiple grounds, and thus, the Petitioner presented no fewer than 127 asserted grounds of unpatentability. Third, the Board found that the Petition presented only underdeveloped arguments. For example, one of the anticipation grounds failed to adequately explain where each element is found in the reference, much less how those elements are arranged as in the claim. Further, Petitioner relied on inherency without sufficient explanation and evidence why such a feature necessarily would be present. Also, the obviousness rejections lacked any expert testimony or other evidence to supports its allegations concerning reasons why one skill in the art would have combined features of references to arrive at the claimed invention, and “common sense” was alleged without a specific prior art reference, expert testimony, or other evidence.
Based on the above, the Board determined that “attempting to evaluate fully the numerous grounds and underdeveloped assertions in the Petition to determine whether Petitioner has shown that it would be likely to prevail in any unpatentability challenge would place a significant burden on the Board and contravene the efficient administration of the Office.” Therefore, the Board declined to expend its “resources scouring the numerous grounds for one that demonstrates a reasonable likelihood that Petitioner would prevail in showing unpatentability of at least one of the claims challenged in the Petition.” Thus, the Board exercised its discretion to not institute an inter partes review of any claim in the ’269 Patent for reasons of administrative efficiency.
Zetec, Inc. v. Westinghouse Electric Co., IPR2014-00384
Paper 10: Decision Denying Institution of Inter Partes Review
Dated: July 23, 2014
Before: Linda E. Horner, Scott R. Boalick, Kevin F. Turner, Barbara A. Benoit, and Neil T. Powell
Written by: Benoit
Related Proceedings: Westinghouse Electric Company LLC v. Zetec, Inc., Case No. 2:13-cv-01124 (W.D. Pa.)