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February 16, 2018Newsletter

This Week at the Board - February 16, 2018

PTAB Grants IPR Institution Based On Prior Art Not Fully Considered During Prosecution

In Westinghouse Air Brake Technologies v. Siemens Industry, the Board granted an IPR, rejecting the patent owner’s arguments that it should be denied under 35 U.S.C.  §325(d). Westinghouse filed a petition for IPR of claims 1-9 and 11-19 of Siemens U.S. Patent No. 6,609,049. Westinghouse argued that the claims were obvious over the content of a Federal Regulation (FR2230) in view of Blesener, published PCT application WO02/091013, and separately in view of Haas, U.S. Patent No. 6,519,512. Siemens argued that FR2230 was discussed in detail in the background section of the patent, and that Haas was considered by the Examiner during prosecution. The Board found that although a summary of FR2230 was present in the Background, there was no evidence that the Patent Office considered FR2230 in its entirety. The Board also found that there was no showing that the Examiner considered the combination of FR2230 and Hass. For these reasons, the board declined to exercise its discretion under §325(d).

A link to the decision is found here.


Federal Circuit Upholds Motion Tracking Patent

In Fed. Cir. 2017-1355, the Federal Circuit recently affirmed a Board decision upholding the validity of U.S. Patent No. 6,474,159, finding that the petitioner Elbit Systems of America had failed to demonstrate by a preponderance of the evidence that the patent was invalid as obvious over U.S. Patent No. 4,722,601 in view of two other prior art references.  The ’159 Patent is directed to tracking motion relative to a moving platform, such as motion-base simulators, virtual trainers deployed on board ships, and live vehicular applications including helmet-mounted cueing systems and enhanced vision or situational awareness displays.  During the IPR the patent owner had relied on an expert, who had explained that the two-step method in the ’159 Patent is not the same as the three-step method in the prior art.  The Board had sided with the expert, and the Federal Circuit found no reason why the Board’s decision was not supported by substantial evidence.           

A link to the decision is found here.

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