PTAB Not a “Death Squad”—More Like a Surgeon

by McDermott Will & Emery
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Xilinx, Inc. v. Intellectual Ventures I LLC; Illumina, Inc. v. Trs. of Columbia Univ.; Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill.; CBS Interactive, Inc. v. Helferich Patent Licensing, LLC

In the final written decisions of eight inter partes reviews (IPRs), all issued in the first half of March, the Patent Trial and Appeal Board (PTAB) sided with the petitioner in each proceeding, canceling all claims under review. While the PTAB has recently stated that it is not a “death squad” for patents, it does seem to effectively remove “diseased tissue” from the patent system.  Recently several patents have emerged from IPR proceedings unscathed. 

Xilinx, Inc. v. Intellectual Ventures I LLC

The PTAB cancelled all challenged claims and denied patent owner Intellectual Ventures’ motion to amend the claims. The IPR was instituted on two grounds of obviousness, one of which being based on only a single reference.  The patent in issue related to a color video projector system having separate light sources.  The light from the sources was combined for improved quality light output as compared to the prior art.  IV urged that the preamble term “video projector system” of claim 1 should be considered as limiting, but the Board construed the independent claim broadly according to the plain and ordinary meaning, with reference to extrinsic evidence, i.e., a technical dictionary.  Of note:  Less than three months ago, based on IPR petitions filed by Intellectual Ventures (IV), the PTAB issued decisions invalidating four Xilinx patents.  In this IPR the PTAB, addressing IV’s motion to amend the claims, found the motion to be fatally deficient for not addressing “in any meaningful way” the level of ordinary skill in the art, what was “within the ordinary creativity and skill set” of that person regarding what it characterized as standard components recited in the claims, or the meaning of claim terms added by amendment. Xilinx, Inc. v. Intellectual Ventures I LLC, (IPR2013-00029, slip op. Mar. 10, 2014). (Arbes, APJ).

Illumina, Inc. v. Trs. of Columbia Univ.

In all three of these IPRs, the PTAB cancelled all challenged claims and denied patent owner  Columbia University’s motion to amend the claims.  The patents related to a “massive parallel method for decoding DNA and RNA.” After institution of the proceeding, the Board determined that Columbia’s characterization of the prior art understated the interest level shown in the prior art for a facet of the claimed methods.  The Board ultimately found Columbia’s arguments of secondary considerations of non-obviousness unpersuasive and sided with Illumina on the asserted obviousness grounds of unpatentability, cancelling all claims under review.  The Board found, however, that Illumina had failed to meet its burden of proof on the sole ground of anticipation urged.  Illumina, Inc. v. Trs. of Columbia Univ., (IPR2012-00006, slip op. Mar. 6, 2014), (Lebovitz, APJ); Illumina, Inc. v. Trs. of Columbia Univ., (IPR2012-00007, slip op. Mar. 6, 2014), (Lebovitz, APJ); Illumina, Inc. v. Trs. of Columbia Univ., (IPR2012-00011, slip op. Mar. 6, 2014), (Lebovitz, APJ).

Of note:  In the 00006 IPR, on Illumina’s request for rehearing of two grounds of unpatentability denied in the Institution Decision, the Board partially reversed its prior position and instituted review on one of those grounds.  On Illumina’s request for rehearing of two grounds of unpatentability denied in the Institution Decision in the 00011 IPR, the Board partially reversed its prior position and instituted review on one of those grounds.  On Illumina’s request for rehearing of the Institution Decision in the 0007 IPR, the Board modified two of the grounds by substituting a different patent publication for one of the cited patent publications, where both publications had the same inventors and shared specifications and disclosures. 

Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill.

In all three of these IPRs, the PTAB cancelled all challenged claims.  The patents related to methods of treating semiconductor devices, by passivation or annealing with deuterium, which purportedly reduced degradation of the device’s operational characteristics over time.  Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill., (IPR2013-00005, slip op. Mar. 10, 2014), (Fitzpatrick, APJ); Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill., (IPR2013-00006, slip op. Mar. 10, 2014), (Fitzpatrick, APJ); Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill., (IPR2013-00008, slip op. Mar. 10, 2014), (Fitzpatrick, APJ).

CBS Interactive, Inc. v. Helferich Patent Licensing, LLC

The PTAB cancelled all challenged claims and denied patent owner Helferich Patent Licensing’ motion to amend the claims. The patent in issue related to a system for selective paging, which notified the user that a message had been received at a server on the related network but without send the full message to the user’s mobile device.  CBS and four other media companies filed an IPR petition, challenging the claims of the patent and the Board instituted trial on two of the asserted grounds of obviousness, each including two common prior art references. During trial, the PTAB found HPL’s proposed constructions to be overly narrow and further found HPL’s expert testimony to be unpersuasive.  CBS Interactive, Inc. v. Helferich Patent Licensing, LLC, (IPR2013-00033, slip op. Mar. 3, 2014), (Chang, APJ).

Of note:  The Board refused HPL’s attempt at antedating one of the references common to both grounds of review.  The inventor of the patent testified to having conceived the subject matter of each challenged claim prior to the filing date of the particular prior art reference. To corroborate that testimony, HPL submitted an undated handwritten specification that allegedly described the claimed invention.  The Board found that the proffered specification failed to meet the requirement that corroboration of conception be evidenced by a showing that the inventor disclosed to others his or her “completed thought expressed in such clear terms as to enable those skilled in the art to make the invention.”

Of note:  On April 16, 2014, the patent owner filed appeals to the Federal Circuit in each of these cases.  In all of these IPR’s the Board fond the challenged claims to be prima facie obviousness, notwithstanding the patent owners assertion of secondary considerations (unexpected results and failure by others, explaining that the patent owner had failed to compare the claimed invention to the closest prior art. 

Practice Note:  The early statistics regarding the PTAB’s disposition of IPR’s so far has raised concerns for patent owners once an IPR is instituted its patent is likely to be invalidated.  Until recently, no patent going through an IPR had emerged from the proceeding unscathed.  That stated, there is a strong argument that the patents the PTAB is now getting rid of are the early “chaff” and, over time, as higher quality patents are challenged, the outcomes will appear less statistically skewed.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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