Burden is on Petitioner to Prove Priority Date of Patent Challenged in Inter Partes Review

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Succeeding on a lone ground of unpatentability, Hewlett-Packard was able to get all 4 challenged claims of an MCM patent into a trial for inter partes review in a case styled as Hewlett-Packard Co. v. MCM Portfolio, LLC (IPR2013-00217), involving U.S. Pat. No. 7,162,549.

The ‘549 patent relates to controllers for flash memory cards. More specifically, the ‘549 patent describes a “flash-memory card reader that accepts flash-memory cards of several different formats using a universal adapter.”

After a brief claim construction analysis, the Board discussed privity under 35 USC § 315(b). In general, because Petitioner resells products that were accused of infringement in an action served well over a year prior to the filing of the petition in this IPR proceeding, Patent Owner argued that § 315(b) barred the IPR filing. The Board held that this was not sufficient evidence to prove privity. For example, Patent Owner provided no persuasive evidence that Petitioner could have exercised control over the alleged privy in related district court litigation. Just because Petitioner and the alleged privy are successive owners of the same allegedly infringing property is not enough to prove privity.

An additional, procedural ground addressed by the Board was the priority date of the ’549 patent given that it claims the benefit of a provisional application and is a continuation-in-part of four non-provisional applications. The Board criticized Petitioner for failing to provide sufficient evidence to support its argument that the ’549 patent was not entitled to the filing date of an early application, as argued by Patent Owner. To that end, none of the applications to which the ’549 patent claims benefit were entered into the record in this case. Further, testimony from Petitioner’s expert was conclusory and incomplete. Order at 8-10. Thus, the Board found that Petitioner’s arguments regarding the later priority date were insufficient and numerous references upon which Petitioner relied were removed from the proceeding.

Petitioner was saved by the fact that its last remaining ground for unpatentability was deemed persuasive by the Board. As such, Petitioner was able to get 4 challenged claims of the ‘549 patent into a trial for inter partes review.

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