Inter Partes Reexamination : US PTO Litigation Alert™

APJs Reject Creative Arguments for not Applying § 315(b) Bar

Scott Daniels | January 7, 2014

The APJs are rapidly developing an extensive body of case law applying the deadline under 35 U.S.C. § 315(b) for requesting inter partes review of a patent.  That statutory provision states that an

inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

(Emphasis added).  Last week, the APJs addressed two § 315(b) questions that some readers may not have previously seen.

In October Samsung Electronics petitioned for inter partes review of four patents owned by Fractus, S.A., that claimed multiband antennae useful in mobile telephones (IPR2014-00008, 00011, 00012, 00013).  Fractus had served Samsung in February 2013 with a complaint alleging infringement of the four patents; but in May 2009, Fractus had served Samsung with an earlier complaint asserting infringement of a series of patents, including the four patents-in-issue here.  Fractus cried foul, claiming that Samsung’s petitions were barred under § 315(b) and should be dismissed.
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Toshiba Attack on Intellectual Ventures IC Patents, Among the Requests Week of December 30, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | January 6, 2014

This past March, Intellectual Ventures I and II sued Toshiba for infringement of ten circuits patents, most of them related to memory.  This past week, Toshiba requested inter partes review of two of those ten patents, U.S. Patent Nos. 5,687,132 and 7,836,371 (see inter partes review Requests No. (2) & (9)).  The ‘132 patent claims “multiple-bank memories and systems” and the ‘371 patent claims an integrated circuit for “testing and debugging of electronic systems, and, in particular, to on-chip circuits for the test and diagnosis of problems in an integrated circuit.” Toshiba has previously requested inter partes review of two other IV patents (IPR2014-00113, and -00201), and will likely be filing further requests against the other six remaining patents, as well.

Apple filed two petitions for inter partes review of a Rensselaer Polytechnic Institute patent (see inter partes review Request No. (10)). RPI’s patent relates “to user interfaces … that recognize natural language.”  Apple asks that these new requests be joined with previously filed request IPR2014-00077. RPI has sued Apple for infringement of the patent. 
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TRW Challenges 10 Car Headlight Patents, among the Requests Week of December 16, 2013

Scott Daniels, Cindy Chen and Jerome Bushnell | December 23, 2013

Over a two-day period, TRW requested inter partes review of 10 Magna Electronics patents, filing two requests against three of those patents (see inter partes review Request Nos. (2) and (4) through (15)).  The patents all relate to systems for controlling automobile headlights.  Magna has sued TRW for infringement of the patents in the Western District of Michigan.

Subaru, Toyota and Ford each requested inter partes review of U.S. Patent No. 6,324,463 that claims a “system for indicating the operational status and parameters of a cruise control system for use in a human operated vehicle” (see inter partes review Request Nos. (24), (25) & (26)).  The owner of the ‘463 patent, Cruise Control Technologies, has sued 15 car companies for infringement.  Each of the three Requests proposes distinct prior art rejections of the claims.  These filings follow Cruise Control’s amendment of the ‘463 claims in late October in a pending ex parte reexamination.

And Netflix filed requests against four OpenTV patents (see inter partes review Request Nos. (2), (16), (18) & (23)), Ford against two TMC Fuel Injection patents (see inter partes review Request Nos. (21 & (22)), and Apple against a WhitServe patent (see inter partes review Request No. (17)).
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Fifty-Three Patents Challenged, Week of December 2, 2013

Scott Daniels and Cindy Chen | December 9, 2013

The number of new patent challenges continues to accelerate – last week saw thirty-two requests for inter partes review, three for post-grant review, and eighteen for ex parte reexamination.  Most notably, Apple, either alone or with one or more co-requesters, attacked six patents owned by either Arendi, THX, or VirnetX (see inter partes review Request Nos. (1), (4), (5), (25), (26), & (28)).  In each instance, Apple is being sued for infringement of the respective patent now being challenged.  Apple was also the target of an anonymous 180-page request for ex parte reexamination (see ex parte Request No. (7)) against its U.S. Patent No. 8,463,238 claiming a mobile device base station.

There is also an increasing pattern of companies filing joint requests.  For instance, Samsung, LG and HTC teamed up to request inter partes review of two content delivery patents owned by Affinity Labs of Texas (see inter partes review Request Nos. (6) & (8)).

Toshiba Samsung Storage requested inter partes review of two LG recording media patents (see inter partes review Request Nos. (2) & (3)).  The companies are involved in an infringement action in Delaware.
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Another Reason to Choose Inter Partes Reexamination

Scott Daniels | June 11, 2012

We have commented a number times that the advantages of inter partes reexamination generally outweigh those of ex parte reexamination.  The PTO Board’s decision this past Friday in Panduit v. ADC Telecommunications (95/000,411; see also 95/000,415) illustrated one such advantage: the right of an inter partes requester to submit new prior art at specific moments in the reexamination.

In an earlier appeal, the Board had entered new grounds for rejection, and the patentee ADC asked that prosecution be re-opened to challenge the new grounds.  In that challenge, ADC argued to the examiner that its claims were patentably distinguishable over the prior art relied upon by the Board, citing several limitations in its claims.  The requester Panduit replied by submitting a new prior art reference; Panduit argued that the reference satisfied those claim limitations and that the reference, in combination with the art already of record, rendered ADC’s claims obvious.

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Choose Inter Partes Reexamination

Scott Daniels | May 23, 2012

The CAFC categorized its decision yesterday in PlaSmart v. Kappos as “non-precedential,” but the case teaches important lessons regarding the current state of reexamination.  First, one cannot assume that each reviewing panel strives to affirm the decision from below – the PTO Board scrutinizes the examiner’s decision, and the CAFC is equally careful in reviewing the Board’s decision.  Second, the obviousness analysis established in KSR remains a potent weapon for those challenging the validity of a patent.  And finally, inter partes reexamination – with its option for the reexamination requester to participate even through the CAFC appeal – is much superior to ex parte reexamination. 

The patent claimed a scooter (tricycle) with a safety improvement, reducing the likelihood of the scooter flipping over.  The significant limitation recited “a supporting arm frontwardly extended from said driven portion of said twister member,” with a safety wheel mounted to the free end of the “supporting arm.” During reexamination, the examiner found that the primary reference satisfied this “supporting arm” limitation; the examiner then rejected claim 1 as anticipated by the primary reference and as obvious over a second reference in view of the primary reference.  On the other hand, the examiner found a series of dependent claims, added in the reexamination, to be patentable because the references failed to show attachment of the safety wheel in the same position as required by those added claims. 

The PTO Board reversed the anticipation rejection of claim 1, finding that the primary reference failed to disclose the claimed attachment of the “supporting arm” to the tricycle; specifically, the Board found that the arm disclosed in the prior art drawing was attached to a base plate, not the twister member as required by all the claims.  The Board also faulted the combination of art relied upon by the examiner, for resulting in a ridiculous scooter having two safety wheels, both raised off the ground.  Thus, the PTO refused to reject claim 1 as anticipated and refused to reject the new claims as obvious.

The requester appealed this refusal to reject to the CAFC who affirmed the PTO’s refusal to reject claim 1 as anticipated, the CAFC agreeing with the PTO that the prior art arm drawing was attached to a base plate, not the twister member. 

The CAFC, however, was not so charitable regarding the PTO’s refusal to reject the claims as obvious over the prior art references.  It concluded that the primary references disclosed each aspect of the claimed invention, except for the claimed safety driving structure discussed above.  It acknowledged that the primary reference failed to “place those universal wheels in the exact locations” required by the patent claims.  It found, however, the primary reference disclosed an additional wheel placed in front of the twister member to improve stability.  The CAFC then determined that “modifying the scooter [of the secondary reference] to prevent tipping by placing [ ] a safety wheel in front of the twister member would thus be  obvious for one skilled in the art of trying to increase stability in the direction of movement.”

Tracking KSR, the CAFC concluded that “such modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in the front of the twister member) to address a known problem (stability), and would thus have been obvious.” 

Regarding the PTO Board’s refusal to reject the newly added dependent claims, the CAFC found that the limitations recited therein were “only minor, predictable variations” of claim 1, without even mentioning any of limitations.  The CAFC therefore reversed the PTO’s refusal to reject the patent claims. 

We thus see a real hop-scotch of rulings through the reexamination process, as well as a heavy reliance on KSR at the CAFC.  Finally, and most importantly, the superiority of inter partes reexamination, over ex parte, is once again on display.  Without the full participation of the requester at the CAFC, the validity of the claims would have been confirmed.

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