Hindsight and Teaching Away Arguments Fall Short in Decision to Initiate IPR Trial

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In a short decision, Fellowes was able to get 16 challenged claims of a Speculative Product Design patent into a trial for inter partes review, in a case styled as Fellowes, Inc. v. Speculative Product Design, LLC (IPR2013-00197), involving U.S. Pat. No. 8,204,561.

The ‘561 patent relates to protective cases for mobile phones and other electronic devices. More specifically, the ‘561 patent describes an improvement over existing cases by combining a hard shell with a soft-elastomeric material in a single part to form the case for the device.

Finding no specific claim terms that required construction, the Board considered the proposed obviousness grounds from Patent Challenger; namely a primary reference in combination with two separate secondary references, both of which relate to cases for personal or portable electronic devices. Patent Challenger argued that it would be obvious to one skilled in the art to combine the primary reference, which taught a two-piece case, with the two secondary references, which taught a co-molding process in merging soft and hard-shell components in cases, to form a one-piece case for a personal electronic device. Patent Owner countered that such analysis was nothing more than impermissible hindsight. Order at 8. To that end, Patent Owner argued that the disclosure that purported to provide the “teaching” to combine was open ended and not specific enough to teach one of ordinary skill to develop a “successful device.” Id. at 9.

Patent Owner also argued that the prior art taught away from the limitations of several dependent claims. Specifically, the dependent claims require that the outer shell of the case be cut away at the corners. The prior art explicitly taught that the corners should not be cut away. The Board rejected this argument, as well, finding that the prior art provided evidence that a person of skill would know the advantages and disadvantages of having protective material at the corners. As such, the reference did not teach away. Id. at 10.

Thus, after a short and straightforward obviousness analysis, Fellowes was able to get 16 challenged claims of the ‘561 patent into a trial for inter partes review based on its proposed obviousness ground.

 

Topics:  Claim Construction, Inter Partes Review Proceedings, Mobile Devices, Obviousness, Patents, Prior Art

Published In: Civil Procedure Updates, Intellectual Property Updates

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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