Takeaway: A petition is allowed to assert that subject matter of the patent-at-issue was not adequately disclosed in a prior application in order to afford it an earlier priority date without running afoul of the rule that a petition cannot challenge whether a claim is unpatentable for failure to comply with the written description requirement.
In its Final Written Decision, the Board found that all of the challenged claims (1-19) of the ’894 Patent are unpatentable. The ’894 Patent relates to a service network that facilitates real-time two-way transactions as opposed to deferred transactions, e.g. e-mail.
The Board began by addressing Patent Owner’s request for recusal. In response to repeated unauthorized filings, the Board limited Patent Owner to paper filings and barred her from electronic filing, and also denied Patent Owner’s unauthorized motions to recuse Judge McNamara. Patent Owner again raised this issue in her Response. The Board noted that a request for recusal is not properly within the scope of a patent owner response, but Judge McNamara decided to address it substantively. He noted that Patent Owner has requested recusal of many other judges and attorneys. He then stated that none of his financial holdings bar him from hearing the case at hand, and also stated that Patent Owner did not seek his recusal in a case where she prevailed. Judge McNamara also noted that Patent Owner published his financial disclosure along with a threatening photo of him, but that this conduct has not influenced the outcome of the proceeding. Therefore, the motion for recusal was denied.
The Board then began the substantive review of the issues. Regarding claim construction, the Board adopted the constructions from IPR2014-00413, which involved the same patent and same claims.
The Board then reviewed the priority date of the ’894 Patent, which is at issue. Petitioner contended that the earliest priority date is the filing date of the application – November 30, 2009 – and that it cannot claim priority to any other applications because the negative limitations recited in the claims of the ’894 Patent are not disclosed in the prior patents. While Patent Owner made arguments otherwise, the Board found that Patent Owner did not provide specific evidence of those disclosures. Therefore, the Board found that the priority date of the ’894 Patent is November 30, 2009.
Patent Owner also argued that the Petition improperly exceeds the scope of inter partes review by incorporating improper analysis of 35 U.S.C. § 112. The Board noted that there is a difference between asserting compliance with § 112 and assessing the priority date for a claim. Petitioner did not argue that the claims of the ’894 Patent are unpatentable because of failure to comply with the written description requirement. Rather, Petitioner argued that, because the subject matter of the ’894 Patent was not properly disclosed prior to the filing of the ’894 Patent, the ’894 Patent cannot claim an earlier priority date.
Finally, the Board noted that Patent Owner did not respond to the grounds upon which review was instituted. Therefore, the Board concluded, without discussion, that Petitioner had shown by a preponderance of the evidence that claims 1-19 are unpatentable for the reasons stated in the Decision on Institution.
SAP America, Inc. v. Lakshmi Arunachalam, IPR2014-00414
Paper 24: Final Written Decision
Dated: August 17, 2015
Patent 8,346,894 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara
Related Proceedings: Pi-Net International, Inc. v. JPMorgan Chase & Co., No. 1:12-cv-00282 (D. Del.); Pi-Net International, Inc. v. JPMorgan Chase & Co., 2015 U.S. App. LEXIS 7126 (Fed. Cir.)