Inter Partes Review : US PTO Litigation Alert™

The Patent Office Can Commiserate With the ITC In Administrative Procedure Act Woes

Cindy Chen | August 8, 2014

Align Technology, Inc. v. ITC

July 18, 2014

Federal agencies such as the International Trade Commission and the United States Patent and Trademark Office enjoy broad administrative authority, and in the case of the ITC, independence. [1] These agencies’ authority, though broad, is not unbounded. The Administrative Procedure Act (APA) reins in that authority by allowing courts to vacate agency decisions that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” up U.S.C. §706(2)(A). Align Technology v. ITC marks an instance where a federal agency is found to have overstepped its broad authority.

Align Technology, Inc. owns patents relating to dental aligners. As teeth are unique, dental aligners must be custom-designed for each patient. Align’s patents disclose various methods of obtaining data to determine the positioning of a patient’s teeth for the purpose of creating a three-dimensional digital model of the teeth. Digital data are then extracted from the three-dimensional digital model as blueprints for manufacturing successive dental aligners to incrementally move the patient’s teeth to their desired alignment.
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A Likely Uphill Battle for Synopsys In Suit Against The Patent Office

Cindy Chen | June 13, 2014

In a complaint recently filed in a Virginia federal court, Synopsys accused the Patent and Trademark Office (“the Patent Office”) of prescribing rules and regulations for inter partes review (77 Fed. Reg. 48727) that are procedurally defective and ultra vires. Synopsys took issue specifically with Patent Office’s Rules 42.108(a) and (b), which govern the institution of review and instruct that:

(a) When instituting inter partes review, the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim;

(b) At any time prior to institution of inter partes review, the Board may deny some or all grounds for unpatentability for some or all of the challenged claims. Denial of a ground is a Board decision not to institute inter partes review on that ground.

These rules, Synopsys argued, are inconsistent with Sections 314(a) and 318(a) of the America Invents Act (“AIA”). Section 314(a) sets the threshold for instituting inter partes review at “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Synopsys interpreted this statutory language to mean that where the threshold is met, the Patent Office must grant a petition for inter partes review in whole.
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Scope of Live Testimony in Final IPR Hearings

Scott Daniels | June 4, 2014

Last week we reported that in K-40 Electronics v. Escort (IPR2013-00203), the APJs had granted the Patent Owner’s request that its inventor be allowed to give live testimony on his invention’s conception date, presumably to remove the references as prior art.  The APJs explained that live testimony was appropriate in view of the type of testimony to be presented.  They set a procedure, however, in which the inventor first would be cross-examined by the Petitioner on his declaration, followed by re-direct examination by the Patent Owner.

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Terminal Disclaimer does not Change Claim Construction Standard, at least not in the Final Stages of an Inter Partes Review

Scott Daniels | May 28, 2014

Patent Owners have criticized the new AIA post-issuance proceedings for a number of reasons.  The loudest criticism, however, has been directed at the APJs’ giving challenged patent claims their “broadest reasonable construction” – making them more vulnerable to attack from the prior art.  Only where the patent has expired (and the Patent owner may no longer amend its claims) do the APJs follow the practice of the District Courts in infringement actions, by construing claims more narrowly according to the Phillips v. AWH decision.

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APJs Allow Live Testimony at Oral Hearing

Scott Daniels | May 28, 2014

This past Thursday, the APJs signaled their willingness to hear live testimony at the oral hearing, at least in certain circumstances.  The panel in K-40 Electronics v. Escort (IPR2013-00203) explained that they do “not envision that live testimony will be necessary at many oral arguments … [but] under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge.”

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APJs Distinguish Patent Owner’s Two Discovery Periods

Scott Daniels | May 12, 2014

Apart from the disclosure of the asserted prior art references, the most important piece of evidence in an inter partes review is the expert’s declaration.  Almost as important are the “observations” that a party may make on its cross-examination of the opposing party’s expert declarant, that is, arguments belittling the testimony of the opposing party’s expert.

A party must be careful, however, in choosing a time in which to take such cross-examination and in choosing a time to seek permission to make its observations.  The APJs’ discovery ruling last week in Respironics v. Zoll Medical (IPR2013-00322) is a case-in-point. There, Patent Owner Zoll cross-examined Petitioner Respironics’ expert declarant and the next day asked the APJs for guidance on how and when to request permission to make observations on that cross-examination.  The APJs gave a mixed answer, depending on the subject matter of the cross-examination.

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What goes into a Patent Owner’s “Preliminary Response?”

Scott Daniels | April 21, 2014

When a petition for inter partes review is filed, the owner of the challenged patent may file a preliminary response explaining why review should not be instituted.  If review is instituted, the patent owner may (1) file a response explaining why the claims under review are patentable over the cited art and (2) request permission to amend its claims, if needed.

Clearly, the role of the patent owner’s response is to dig into the merits of whether the claims are valid over the prior art.  What, then, is the role of the patent owner’s preliminary response?  In several venues, the APJs – who have diligently crisscrossed the country to explain the details of review proceedings to eager practitioners – have indicated that the preliminary response serves a limited role. The patent owner should raise narrow legal arguments in the preliminary response, such as estoppel, and save the heavy validity analysis for the response. 
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Investors in a Separate Corporation that Files an IPR Petition Are Not Real Parties in Interest

Thomas Bejin of Bejin, VanOphem & Bieneman PLC | April 2, 2014

Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent).  The ‘799 patent is related to a method of file synchronization using a signature list.  Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google.  More than one year after the Google case was filed, Unified Patents filed a petition to institute Inter Partes Review (IPR) of certain claims of the ‘799 patent. 

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Amending Claims in IPRs is not Getting Easier

Scott Daniels | March 10, 2014

The Patent Office justifies its claim construction standard in inter partes and post-grant reviews – the broadest reasonable interpretation – by noting that that the patentee is always free to amend its claims to distinguish over the prior art.  In early IPR and CBM practice, however, such claim amendments have proven difficult so far.

The APJs’ Final Written Decision in the IPR BlackBerry v. MobileMedia Ideas (IPR2013-00016), cancelling all challenged claims, is a recent example.  MobileMedia’s patent claimed an electronic picture frame for displaying an image in a normal direction regardless of the direction in which the frame is held. The challenged independent claim included the limitation “means for determining a direction … .”

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Amending Patent Claims in Inter Partes Reviews

Scott Daniels and Cindy Chen | February 24, 2014

The number of “Final Written Decisions” in inter partes review proceedings is still too small to talk about a “kill rate.”  Nevertheless, the initial results appear to favor those challenging patent validity.  A notable example is the APJs’ decision from earlier this month in Nichia v. Emcore (IPR2012-0005), where the petitioner appears to have won on all issues.  The case is noteworthy for practitioners, however, in its lengthy instruction to patent owners on how to amend claims in inter partes review.


The patentee Emcore moved to amend 10 of the 17 claims under review.  The APJs denied the motion.  A series of guiding principles for patentees to consider may be gleaned from the APJs’ decision. 

  • Inter partes review is “more adjudicatory than examinational.”
  • The patentee has the burden of showing that it is entitled to amend its claims.
  • For each challenged claim, a patent owner may propose a reasonable number of substitute claims, i.e., in most all cases, there will be one substitute claim for each claim replaced.
  • For each proposed substitute claim, the patentee must identify the challenged claim that it replaces.
  • The list of proposed substitute claims must identify any new subject added to or deleted from the original claim.
  • The motion “must identify how the proposed substitute claims are to be construed, especially where the proposed substitute claims introduce new claim terms.”
  • The motion must “respond to a ground of unpatentability involved in the trial,” presumably the grounds on which the replaced claim is reviewed.
  • A challenged claim may not be broadened in any respect.
  • The motion must expressly identify the written description support in the original application (not the issued patent) for a proposed substitute claim.
  • The patentee “bears the burden of proof in demonstrating patentability of the  proposed substitute claims over the prior art in general, and thus entitlement to add these proposed substitute claims to its patent.”
  • The patentee must explain why the proposed substitute claims are patentable over all prior art of record, not merely over the prior relied upon for the grounds of review.
  • A conclusory statement by the patentee or its expert that the proposed substitute claims are patentable over the prior art references is insufficient.

The APJs denied Emcore’s motion and, in doing so, elucidated on these principles.  First, the APJs concluded that the motion had failed to propose a reasonable number of substitute claims.  “Emcore generally identifies the challenged claims, as a group, to be cancelled and identifies the proposed new claims, as a group. Id. Emcore fails to demonstrate which proposed new claim is replacing which specific challenged claim.”

Second, the motion failed to comply with the claim listing requirement because it did not identify all the changes between the original claims and the proposed substitute claims.  Specifically, the motion failed “to identify the limitation in proposed claim 18—‘wherein the top layer prevents cratering of the semiconductor during bonding’—as a new limitation, and fails to identify the limitation in claim 2—‘wherein said annealing step is performed at about 400-600 ºC’—as a deletion.”

Third, the motion construed three claim terms, but did “not provide any constructions for the new claim terms recited in its proposed substitute claims.”

Fourth, the APJs found that the motion did not comply with the requirement of responding to a “ground of unpatentability.”

Emcore does not explain adequately why the removal of all those limitations is responsive to a ground of unpatentability. Emcore fails to appreciate that a patent owner may not seek to broaden a challenged claim in any respect, in the name of responding to a ground of unpatentability. A proposed substitute claim is not responsive to a ground of unpatentability of a challenged claim if it removes any feature of the challenged claim being replaced, and even more so, as here, if all of the features of the challenged claim are being removed. 

(Emphasis added).  

Fifth, the motion did not

cite to the originally-filed specification of the ’965 application for the actual claim language of each proposed substitute claim. Although Emcore cites to the ’215 patent, that alone is insufficient. For instance, Emcore provides a citation, without any explanation, to the patent claims that may or may not be a part of the original disclosure—“Proposed claim 21: See, e.g. existing claims 6, 14, and 15.” Mot. A. 5. Such a vague statement is inadequate to determine the written description support for Emcore’s proposed substitute claims.

(Emphasis added). 

And sixth, the motion failed to explain adequately why the proposed substitute claims are patentable over the prior art.  The patentee presented an expert declaration on this point, but the

declaration does not discuss each new feature added in the proposed substitute claims. Neither Emcore’s motion, nor Dr. Goorsky’s testimony, discusses the level of ordinary skill in the art, explaining the basic knowledge and skill set already possessed by one of ordinary skill in the art, with respect to the new claim features. Limiting the discussion to the references relied upon in the instituted ground of unpatentability does not provide a meaningful analysis.

 (Emphasis added). 

 Was the APJs’ denial of the motion to amend based on the cumulative impact of the six requirements discussed above?  Or would they have denied the motion for failure to comply with any of the requirements?  One senses the latter.  Permeating the decision is the belief that the APJs need to be as strict as they are in order to deal with the volume of review proceedings.  As that volume increases, the APJs are unlikely to relax their standards.

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