Keeping Score at the PTAB

by McDermott Will & Emery

Motorola v. Mobile Scanning; Adidas v. Nike; Berk-Tek v. Belden; Munchkin, Inc. v. Luv N' Care, Ltd. -

In the final written decisions of five inter partes reviews (IPRs) the Patent Trial and Appeal Board (PTAB) overwhelmingly sided with the petitioner, canceling 124 out of 126 claims under review.

Motorola v. Mobile Scanning

The PTAB cancelled all challenged claims and denied patent owner Mobile Scanning Technologies’ motion to amend the claims. The IPR was instituted on grounds of anticipation and obviousness. The patent in issue disclosed an adapter that would electronically couple to a personal data assistant (PDA) and included a laser or other light source that could be modified into a digital signal to transfer information to the PDA. A significant issue raised during claim construction was the construction of the term “personal data assistant.”  Mobile Scanning argued for a construction that included synchronization functionality between the PDA and a host computer. However, the Board noted that Mobile Scanning did not cite to any disclosure in the patent specification that supported importing a synchronization function into the claims, nor did the patent owner provide any support for its proposed definition of synchronization. The Board thus refused to limit the claims to a device capable of performing a synchronization function. The Board further denied Mobile Scanning’s motion to amend on the basis that the proposed amendments were neither supported by the written description, nor did they add patentable subject matter. Motorola Solutions, Inc. v. Mobile Scanning Techs., LLC, IPR No. IPR2013-00093 (PTAB, Apr. 24, 2014) (McNamara, APJ).

Adidas v. Nike

The PTAB granted the portion patent owner Nike’s motion to amend that requested cancellation of 46 challenged claims, but denied the portion requesting the substitution of four new claims. The IPR was instituted on grounds of anticipation and obviousness. The patent related to articles of footwear having a textile “upper,” which is secured to a sole structure.  In its decision, the Board noted that an inter partes review is more adjudicatory than examinational in nature, and as such the patent owner bears the burden of establishing that it is entitled to the relief requested (in terms of a motion to amend). Nike argued that the proposed substituted claims were patentable over all known prior art, including prior art known to Nike. Further, Nike argued that substitution of the four new claims was proper because the new claims did not enlarge the scope of the original claims. While the Board was persuaded that Nike’s substituted claims did not enlarge the scope of the original claims, it nevertheless denied substitution of the new claims concluding they were not patentable over prior art.  In doing so the Board acknowledged that the patents found to be prior art were not cited during the prosecution history of the Nike patent. The Board remarked that conclusory statements such as “and other prior art known to Nike” are facially inadequate to demonstrate patentability. Adidas AG v. NIKE, Inc., IPR No. IPR2013-00067, (PTAB, Apr. 28, 2014) (Arpin, APJ).

Practice Note:  IPR2013-00067 is a relatively rare example of an inter partes review not associated with any companion litigation.

Berk-Tek v. Belden

The PTAB cancelled all but two of the 77 challenged claims in these three IPRs. The patents in issue related to high performance data cables utilized in communication systems, which ostensibly reduce crosstalk. Berk-Tek LLC v. Belden Techs. Inc., IPR No. IPR2013-00058, (PTAB, Apr. 28, 2014) (Kauffman, APJ); Berk-Tek LLC v. Belden Techs. Inc., IPR No. IPR2013-00059, (PTAB, Apr. 28, 2014) (Kauffman, APJ); Berk-Tek LLC v. Belden Techs. Inc., IPR No. IPR2013-00069, (PTAB, Apr. 28, 2014) (Kauffman, APJ).

Practice Note:  On March 18, 2014, the Board also cancelled four of the six challenged claims of another of Belden’s high performance data cable patents. In IPR2013-00057, the Board spared the two surviving claims because the petitioner was deemed to have provided insufficient reason why a person of ordinary skill in the art would have combined prior art teachings.

Munchkin, Inc. v. Luv N’ Care, Ltd.

The PTAB found the sole claim of design patent owner Luv N’ Care’s patent to be unpatentable as obvious over its own prior art, and denied Luv N’ Care’s motion to amend the patent claim. The patent in question claimed a design for a child’s “sippy cup” and was asserted in a district court action.  In its obviousness determination, the Board focused on two prior art designs of Luv N’Care.  Luv N’ Care did not argue that its patent claim was distinct from those designs, but rather that the designs were not prior art at all.  However, the Board determined that the challenged patent did not reasonably convey to those skilled in the art that the inventor had possession of the claimed design, because of differences in the design of the spout, and that the underlying application was therefore not entitled to the filing date of the earliest claimed priority application.  Therefore the cancelled claim was found to be obvious in light of the earlier design. Further, the Board found that the patent owner’s proposed amended claim sought to enlarge the scope of the original claim, and the motion to amend the patent was subsequently denied. Munchkin, Inc. and Toys “R” Us, Inc. v. Luv N’ Care, Ltd., IPR No. IPR2013-00072, (PTAB, Apr. 21, 2014) (Fitzpatrick, APJ).

Practice Note: The patent owner, in moving to amend its patent claim, effectively argued that the proposed amended claim was not broader than the issued claim because “to an ordinary observer” the design would appear “substantially the same.” The PTAB definitively rejected Luv N’ Care’s argument, observing that it was unaware of “any authority that has applied the ‘ordinary observer’ test” to compare the scope of two design patent claims.


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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