Inter Partes Review Still Difficult for Patent Owners

by McDermott Will & Emery
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EcoWater Systems LLC v. Culligan International Co.

In a final written decision, the Patent Trial and Appeal Board (PTAB, the Board) found several claims subject to the requestor’s petition to be unpatentable over the prior art and denied the patent owner’s motion to amend the claims. EcoWater Systems LLC v. Culligan International Co., Case No. IPR2013-00155 (PTAB, June 24, 2014) (Droesch, APJ).

EcoWater challenged Culligan’s smart water softener patent, which claimed a water softener that could check water chemistry levels, transmit the chemistry information to a service provider if service was needed, download updated software and provide two-way communication between the softener and a remote controller.

Claim Construction

he Board construed two terms which were critical to patentability: “said first location is different from said second location” and “automatically.” Neither party provided a construction for either term. However, in arguing around prior art, the patent owner argued that the second location cannot be “at or near” the first location.  The Board disagreed with patent owner, particularly given an embodiment in the specification that described the first location and the second location being in the same house. Accordingly, the Board found that the “location” term should be construed as “the first site dissimilar from the second site.”

Similarly, the patent owner implied a construction for “automatically” when arguing that the prior art did not disclose automatically transmitting information because the prior art had intermediate or extra steps.  Again, the Board disagreed with the patent owner, noting that the specification described intermediate steps in the transmission from the water softener to the service provider.  Accordingly, the Board construed “automatically” as “independent of external influence or control.”

In drafting its constructions, the Board first noted that the specification did not provide a reasonably clear, deliberate and precise definition for either term. Accordingly, the Board relied on dictionary definitions to determine the plain and ordinary meaning. The Board then confirmed that the dictionary definitions did not conflict with the specification.

Institution Claim Construction

The patent owner conceded that while most of the claim elements were disclosed in the prior art, the art did not show a situation where the first location was different from the second location, or was automatically transmitting information to the service provider. However, the Board found that, based on its claim constructions, the prior art did disclose these limitations and thus rebuffed the patent owner’s arguments as based on flawed (implied) constructions.

Motion to Amend

The Board noted that the burden is on the patent owner to demonstrate patentability of the proposed substitute claims, including written description support.

In the proposed substitute claims, the patent owner attempted to add the modifier “automatically” to “download updated software,” and for support, pointed to a paragraph in the specification that unfortunately (for the patent owner) did not include the word “automatically.”  The patent owner did not explain why “automatically downloading” was omitted from the specification, or why the specific step of automatic downloading is supported by automatic communication (which was disclosed in the specification). Similarly, the patent owner did not provide any written description support for adding the modifier “directly” to the phrase “transmitting to a service provider,” nor did the patent owner provide an explanation how the original specification reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter. Accordingly, the PTAB concluded that the patent owner did not meet its burden to show written description support for proposed substitute independent claim.  In addition, for another proposed substitute dependent claim, while the patent owner did cite support in the specification for the limitations of that claim, its failure to provide support for the underlying base claim doomed the proposed substitute claim.

The patent owner also failed to assert that automatically downloading updated software, as taught by the prior art of record, would have been beyond the knowledge, skill and ordinary creativity of one with ordinary skill in the art.

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