Scott Daniels | June 28, 2013
Patent examiners, either considering original applications or reexamining issued patents, tend to operate with a certain amount of flexibility. For instance, where a reexamination request asserts that a claim is anticipated by a particular prior art reference, an examiner might conclude that the claim is not anticipated, but is obvious over the reference and reject the claim accordingly. The APJs in their inter partes review institution decisions, in contrast, rule on only the validity issues expressly presented to them.
Last week’s institution decision in Medline Industries v. Paul Hatrmann AG, IPR2013-00173, is exemplary. The petition asked for inter partes review, asserting that independent claim 1 and dependent claims 4-7, 10, 14 & 16 were anticipated by the Goates Patent.; it also asserted that several other dependent claims were obvious over Goates in combination with certain secondary references.
The APJs found that Goates met each limitation of claim 1 and the challenged dependent claims, except for the so-called “retaining forces” limitation in claim 1. The APJs therefore denied inter partes review of those claims based on Goates as an anticipatory reference. On the other hand, the APJs concluded that the secondary reference “Karami” did satisfy the “retaining forces” limitation and that there was a “reasonable likelihood” that the secondary reference would have motivated one skilled in the art to modify Goates to meet the requirements of claims 2-3 and 8-9. They therefore ordered inter partes review of dependent claims 2-3 and 8-9 on the issue of whether those claims would be obvious over Goates in combination with the secondary Karami reference.
But what about claim 1? What about dependent claims 4-7, 10, 14 and 16? Isn’t there a reasonable likelihood that they are obvious over Goates and Karami? After all, the APJs found a reasonable likelihood that the narrower dependent claim 2 was obvious. The APJs don’t say because the petition did ask them to rule on that issue.
The petitioner was not entirely out of luck. The petition also asked for, and the APJs granted, inter partes review of claim 1 and dependent claims 2-21 on the basis of another primary reference, the Benning patent, in combination with Karami and other secondary references. This grant of inter partes review on the basis of Benning and Kamari should please the petitioner, but it also makes us ask why the APJs didn’t also take the initiative by granting review of claims 1, 4-7, 10, 14 and 16 based on Goates and Kamari.
What petitioners should note is that they need to assert each possible ground for rejection, leaving nothing to the APJs initiative.