In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to show that claims 1 -10 of U.S. Patent No. 6,516,236 were invalid. In a decision the same day in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), the patent owner repeated the feat, saving claims16-30 and 46-59 of U.S. Patent No. 8,073,557.
In part petitioner came up short, by not adequately rebutting the testimony of the patent owner’s expert. In an interesting tactic, during cross examination of petitoner’s expert, patent owner presented a list of disagreements with patent owner’s experts, which petitioner’s expert identified as “accurate,” but which did not include four claim elements that patent owner’s expert testified were missing from the prior art, causing the Board to conclude that the rebuttal testimony did not establish that the testimony of patent owner’s expert should not be credited. In the latter decision, the Board also criticized petitioner for failing to specifically identify any specific element or feature disclosed in prior and and instead arguing what “ordinary artisans would recognize.” Argument is not a substitute for disclosure.