Granting Request for Rehearing Based Upon Showing That Secondary Ground Would Defeat Swear-Behind Defense IPR2014-01448


Takeaway: The Board granted rehearing of a decision declining to institute an obviousness ground because although it is arguably weaker substantively, it would avoid a swear-behind defense on which the arguably stronger ground was subjected.

In its Decision, the Board granted the rehearing in part, so as to institute an inter partes review of claims 1 and 7 of the ’279 Patent based on obviousness over He and Korodi. However, the Board continued to decline to institute the other obviousness ground asserted in the Petition. In its Decision on Institution, the Board had instituted review of claims 1 and 7 under 35 U.S.C. § 103 in view of Gustafsson and He; declined institution of an anticipation ground based on Naghi; and declined institution of an obviousness ground over He and Korodi or Currie (“Assertion 2”), because Petitioner did not explain adequately the relative strengths and weaknesses of its asserted grounds.

In a request for rehearing, the party requesting rehearing “must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously.” Although, the Board still determined that Petitioner did not fully explain Assertion 2 in the Petition, it agreed that sufficient argument was provided.

Petitioner argued that the grounds of Assertion 2 are necessary in addition to the previously instituted Assertion 1, because of Patent Owner’s alleged swear-behind defense that could possibly overcome the Assertion 1 but not Assertion 2.

The Board agreed that if Patent Owner were able to prove a conception date “at least as early as April 2004” and diligence from conception date to reduction to practice, Gustafsson would not be considered prior art under 35 U.S.C. § 103. The Board also agreed with Petitioner that the asserted ground on He and Korodi would add only one additional reference to consider in Patent Owner’s response, the burden of which would be outweighed by the goal of providing an efficient and cost-effective resolution of this matter. Accordingly, the Board agreed to grant the rehearing and reassess its determination on institution of Assertion 2.

The Board reconsidered Patent Owner’s previous argument of improper combination of references. Specifically, Patent Owner had argued that Petitioner failed to articulate any motivation to combine the teachings beyond conclusory statements and failed to provide evidence that combining the teachings would have been a predictable variation of devices. However, the Board, in its reconsideration, credited Petitioner’s expert’s testimony and agreed that the combination of He and Korodi unites old elements with no change in their respective functions, and thus a “merger of familiar elements according to their established functions, known methods, and predictable results.” Accordingly, the Board instituted on this ground.

The Board again declined the other obviousness ground of Assertion 2, namely He in view of Currie, because Currie would also no be prior art if Patent Owner were successful in establishing a conception date “at least as early as April 2004” and diligence from conception to reduction to practice. Accordingly, the ground was not found to be any stronger or weaker than Assertion 1.

Sure-Fire Electrical Corporation v. Yongjiang Yin and Shenzhen EL Lighting Co. LTD., IPR2014-01448
Paper 25: Decision on Request for Rehearing Institution of Inter Partes Review
Dated: June 1, 2015
Patent: 7,671,279 B2
Before: Debra K. Stephens, Jennifer S. Bisk, and Peter P. Chen
Written by: Stephens