Final Written Decision (Motion to Amend) IPR2013-00175


Takeaway: In arguing patentability of the challenged claims over the prior art, the Board is more likely to be persuaded by arguments supported by testimonial evidence rather than unsupported attorney argument. Also, substitute claims in a motion to amend must be supported by the original disclosure, and if multiple substitute claims are proposed for one challenged claim, the patent owner must establish a patentable distinction between the substitute claims.

In its Final Written Decision, the Board held that Petitioner showed by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are unpatentable as anticipated by Sanders and that claim 14 is unpatentable as obvious over Sanders – the only grounds upon which trial was instituted. The Board also denied Patent Owner’s Motion to Amend.

The ’673 patent involves systems and methods for generating infrared (IR) light with a wavelength in the mid-infrared range. Embodiments of the ’673 patent use a “Raman wavelength shifter that is coupled to a pump laser to produce a longer wavelength.”

The Board first addressed claim construction. The Board explained that terms are given their plain meaning unless the plain meaning is inconsistent with the specification.  The Board also noted that it must be careful not to read particular embodiments into the claims if the claim language is broader than the embodiment.

The only term that was disputed by the parties was “gain fiber” that appeared in the independent claims, which require “a gain fiber coupled to the multiplexer and operable to receive at least the first optical signal.” Patent Owner argued that the construction of the term in the Decision to Institute was too narrow.  The Board had construed the term to mean “an optical fiber that functions as a gain medium (i.e., amplifies an input signal).”  Patent Owner argued that the claim language contains no indication that the gain fiber functions as a gain medium and proposed the definition of “an optical fiber comprising any waveguide structure.”

The Board agreed with Petitioner that Patent Owner’s proposed construction would read out the term “gain,” which one of ordinary skill in the art would understand requires amplification. The Board, however, modified its previous construction slightly, acknowledging that the gain fiber is “operable” rather than “functions” as a gain medium.  Therefore, the modified construction of the term was “an optical fiber that is operable as a gain medium (i.e., amplifies an input signal).”

The Board then addressed the grounds of unpatentability based on Sanders. Patent Owner contended that Sanders failed to disclose the claimed “nonlinear oscillator” of independent claim 13.  However, the Board agreed with Petitioner that “[Patent Owner’s] attorney argument is not persuasive.”  The Board was persuaded, based on the express disclosure of Sanders and the testimony of Petitioner’s declarant, that Sanders disclosed the limitation in question.

Patent Owner also argued that Sanders failed to disclose the limitation that “the wavelength shifting fiber operates to wavelength shift the at least one wavelength . . . to a second optical wavelength,” and that “the nonlinear oscillator operates to wavelength shift the second optical wavelength” to a third wavelength, as recited in claim 13. However, the Board was not persuaded, indicating that Patent Owner failed to show that the limitations require shifting the entire wavelength as opposed to shifting a portion of the wavelength, which was admittedly disclosed by Sanders.

The Board also noted that the slight modification to the construction of “gain fiber” did not affect its finding that Sanders discloses the limitation.

With respect to claim 1, Patent Owner raised arguments similar to those with respect to claim 13, which the Board found unpersuasive. The Board also noted that Petitioner relied upon Figure 20 of Sanders in its Reply but did not make this argument in the Petition.  Thus, the Board declined to consider this argument.  Nevertheless, as indicated above, the Board was not persuaded by Patent Owner’s arguments and found that Petitioner showed by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 were anticipated by Sanders.

With respect to obviousness of claim 14 over Sanders, Patent Owner did not raise any arguments regarding this instituted ground of unpatentability. Thus, the Board held the claim was unpatentable.

The Board next addressed Patent Owner’s Motion to Amend Claims, which was contingent upon a finding of unpatentability. The Board stated that the movant bears the burden of proof to establish entitlement to the relief requested, and that entry of the amendment would only be granted upon demonstration of the patentability of the substitute claims.

In its Motion to Amend, Patent Owner submitted two alternative substitute claims for each challenged independent claim.

First, addressing Patent Owner’s first set of substitute claims, the Board held that Petitioner failed to establish written description support for the substitute claims. In this regard, Petitioner improperly cited to the specification of the issued patent rather than the original disclosure as required by Rules 42.121(b)(1) and (2).  In addition, Petitioner only provided citations that allegedly supported the added limitations rather than identifying support “for each claim,” as required.

Second, the Board held that even if written description support were established, Petitioner failed to show the patentability of the substitute claims. In particular, Patent Owner argued that the amended claims were patentable over Sanders as well as a prior art reference, Lees, produced in a related litigation in the U.S. Court of Federal Claims.  However, the Board agreed with Petitioner’s analysis, as supported by its declaration testimony, that the claims would have been obvious over Sanders and Lees.  The Board was not persuaded by Patent Owner’s argument that “summarily asserts that Dr. Ippen [Patent Owner’s declarant] shows that the combination proposed by [Petitioner] would not work.”  The Board stated that “a party may not make its case within the declaration of an expert and state in the motion itself that readers simply should refer to the presentation in the declaration.”  In this case, the Board held that no argument was presented in Patent Owner’s Reply, but only referred to its expert’s declaration.  In addition, the Board simply disagreed with Patent Owner’s declarant’s factual analysis of the prior art in relation to the substitute claims.

The Board finally addressed Patent Owner’s second alternative substitute claims for the challenged independent claims. Patent Owner acknowledged that it provided two substitute claims for each of original claims 1 and 13 when the presumption is that only one claim is necessary, but argued that there was need for more than one substitute claim.  Patent Owner argued that it was entitled to greater than one substitute claim because “the Board’s one-year timeline will not be affected given the structure of the substitution contingencies; it has one opportunity, barring authorization to file an additional motion to amend, ‘to get it right and there is currently no meaningful guidance as to the metes and bounds of the “demonstration of need”’; and, it has provided the Board with ‘key portions of Petitioner’s prior art and explanation as to why the art does not read on the substitute claims.’”

The Board was not persuaded. In particular the Board noted that to justify more than one substitute claim, Patent Owner must “show patentable distinction of the additional substitute claim over all other substitute claims for the same challenged claim.”  Patent Owner must also discuss the “significance and usefulness” of the added features in a proposed substitute claim “from the perspective of one with ordinary skill in the art.”  The Board held that Patent Owner failed to do so and had not met its burden to demonstrate the patentability of the second set of substitute claims.

BAE Systems Information and Electronic Systems Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175
Paper 45: Final Written Decision

Dated: June 19, 2014
Patent 7,633,673 B1
Before: Stephen C. Siu, Justin T. Arbes, and Rama G. Elluru
Written by: Elluru