Inter Partes Review : US PTO Litigation Alert™

Medtronic’s IPR Petition Denied

Scott Daniels | February 20, 2014

It has been commonly reported that the APJs are instituting approximately 85% of the inter partes review requests filed.  This institution rate might be declining, however, as the APJs critically review petitioners’ application of the challenged claims to the cited prior art. 

 The statutory standard for deciding whether to institute is, of course, whether the petition and any response from the patents shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”  35 U.S.C. § 314(a); emphasis added.  In their application of this standard, however, the APJs require each detail of how the claims relate to the prior art be expressly defined

 Last Thursday’s decision denying institution in Medtronic, Inc. v. NuVasive, Inc. (IPR2013-00504) is a case-in-point.  NuVasive’s patent – which is the subject of an infringement action in the Southern District of California – claims a spinal fusion implant.  In customary fashion, Medtronic presented a claim chart linking each limitation of NuVasive’s challenged claims to the disclosure of the prior art. 

Among those limitations was one reciting a certain width and length relation of the patented implant.  Medtronic presented the following drawing from the primary prior art reference, identifying the length and width dimensions with horizontal and vertical arrows. 


 Maximum Lateral Width

 2014.02.20 Fig 63

Longitudinal Length

Medtronic then explained that this drawing from the primary prior art reference

provides that the implant has a longitudinal length that extends from the proximal wall to the distal wall and a maximum lateral width extending from the first side wall to the second sidewall. As shown in Figure 63 of Frey, the longitudinal length is perpendicular to, and greater than, the maximum lateral width.

This explanation did satisfy the APJs.

Medtronic recognizes that the medial plane of the implant would be a plane that intersects the implant approximately at the midpoint of the longitudinal length. The maximal lateral width, as shown in annotated Figure 63, is not at the midpoint of the longitudinal length, but is closer to one end of the implant than the other. Stated differently, Medtronic does not explain how the maximum lateral width of the implant is along a medial plane that is generally perpendicular to the longitudinal length, as required by independent claim 1.

(Emphasis added).  Thus, in the APJs’ opinion, Medtronic’s analysis failed to track the wording of the claim limitation and thus failed to demonstrate “a reasonable likelihood that it will prevail on any of the challenges.”

The message for practitioners is that an IPR petition is not merely the opening salvo of the long campaign.  Rather, every aspect of a proposed ground for review must be explained with unerring precision.




APJs Advise Patentees on Amending Claims

Scott Daniels | January 8, 2014

While the APJs are strictly applying the inter partes review rules, they are also proactively advising parties on what is required to comply with those rules.  For instance, in a conference call last week in Corning Gilbert v. PPC Broadband (IPR2013-00347), the APJs sua sponte addressed the requirements for a patent owner to amend its claims.

In particular, a proposed amendment is not authorized until the patent owner has shown that the substitute claims are patentable over the prior art.

A motion to amend claims is insufficient if it simply explains why the proposed substitute claims are patentable over the prior art references relied upon in the review. Thus, the patent owner must do more than simply state that none of the prior art references of record discloses the combination claimed, or that no such specific combination is known to the movant.  The patent owner must also do more than state that the prior art of record would not have rendered the subject matter of the substitute claims obvious.
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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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What May a Patentee Argue in its Preliminary Response?

Scott Daniels | September 6, 2013

A patent owner’s first opportunity to challenge a request for inter partes review is by filing a “preliminary response.”  The relevant portion of the AIA states:

 [i]f an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.

 (35 U.S.C. § 313: emphasis added).  Are there any limits on what the patent owner may include?  Is there anything that the patent owner must include?

Those questions were raised Tuesday in Athena Automation v. Husky Injection, IPR2013-00290.  Petitioner asked for authorization to strike patentee’s preliminary response, arguing that it did not comply with 35 U.S.C. § 313 because it was directed solely to the doctrine of assignor estoppel.  According to the petitioner, the patent owner’s preliminary response may include only arguments that the petition fails to meet one or more of the requirements recited in the inter partes review provisions in the AIA.  Arguments unrelated to those provisions – such as assignor estoppel –are not permitted, the patentee contended.

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What Does Default Look Like in IPR Cases?

Scott Daniels | July 18, 2013

As expected, the APJs have applied their rules very strictly to ensure compliance with the statutorily imposed deadlines for inter partes review and post-grant review proceedings.  How will the APJs handle cases involving parties who are unfamiliar with those rules, particularly foreign companies?

So far, the answer has been that the APJs will treat such parties carefully, giving them a fair opportunity to participate to the proceeding. For instance, in UKing Universe, Inc. v. Chang-Kang Chu, IPR2013-00212, the challenger filed its petition at the end of March, asserting that each of the claims of the patent are unpatentable over the prior art.  The APJs sent a notice to the patent owner, requiring it to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the Petition.  The patent owner did not reply.

Three times – on April 19, 2013, April 29, 2013, and May 9, 2013 – the APJs contacted the patent owner, reminding it that its filing was overdue and notifying it that a mandatory telephone conference would occur on May 14, 2013.  Soon thereafter, a representative of the patent owner sent the APJs an email which read: “Thank you for this notice [concerning the May 14, 2013 telephone conference]. The Patent Owner would like to abandon the patent. Thus, he will not give any response to the petition.” 
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APJs Issue another Ruling on One-Year Deadline to File IPR Requests

Scott Daniels | July 11, 2013

Earlier this week, we reported a ruling by the APJs in The Scotts Company v. Encap, IPR2013-00110, regarding the AIA requirement that a party file a petition for inter partes review within one year of the date that party had been served with an infringement complaint. 35 U.S.C. § 315(b).  The APJs have now issued another ruling on the § 315(b) one-year deadline, this time in BAE Systems v. Cheetah Omni, IPR2013-00175.  Again, they found that the petition had been timely filed.

Here are the relevant facts:

  • On November 12, 2010, Cheetah filed a patent infringement complaint in District Court against BAE Systems.
  • On February 10, 2011, Cheetah voluntarily dismissed its infringement action.
  • On April 22, 2011, Cheetah filed a complaint in the U.S. Court of Federal Claims against the United States, asserting infringement of the same patent and identifying BAE Systems’ Boldstroke™ system as an infringing product.
  • On March 19, 2012, BAE Systems was served with a notice by the Federal Claims court requesting that BAE Systems appear and assert any claims or interest it may have in the Federal Claims litigation.
  • On March 4, 2013BAE Systems filed the present IPR petition.

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APJs Rule on One-Year Filing Deadline for IPR Requests

Scott Daniels | July 8, 2013

The AIA provides that a party may not file a petition for inter partes review if that party had been served with an infringement complaint more than one year previously. 35 U.S.C. § 315(b).  Fine, but how does this provision apply to cases where the accused infringer waives service, i.e., where service never occurs?

In The Scotts Company v. Encap, IPR2013-00110, the patent owner Encap argued that the challenger Scotts Company had failed to file its petition before the one-year deadline because Encap had sued Scotts Company for infringement of the ’259 patent more than one year before Scotts Company filed its IPR petition.

The APJs disagreed with Encap, determining that Scotts Company’s petition was timely filed. They explained that the “mere notification of a complaint does not trigger the one-year statutory bar.” They cited Federal Rule 4(d)(4) for the nuance that “[w]hen the plaintiff files a waiver, proof of service is not required and these rules apply as if a summons and complaint had been served at the time of filing the waiver.” (Emphasis added.)

The APJs therefore held that where a petitioner waives service of a summons, the one-year time period begins on the date on which waiver is filed.  Since Scotts Company waived service of a summons in the parallel infringement action no earlier than January 12, 2012, and had filed its petition on January, 10, 2013, Scotts’ petition was timely filed.

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