March 1, 2016Newsletter

This Week at the Board - March 1, 2016

PTAB Rejects Expert Opinion Based on Conclusory Statements and Lack of Technical Knowledge

In a Patent Trial and Appeal Board (PTAB) decision (IPR2014-01281) on February 23, 2016, the Patent Owner tried to rely on the declaration testimony of its expert to support an argument that a person of skill in the art would have recognized that an aerosol bayonet coupling is not structurally the same as a bayonet connection for a non-aerosol interface. However, the Board found that the testimony of the expert was conclusory and lacked sufficient supporting evidence and technical explanation. The Board noted that during his deposition, the expert displayed a lack of technical knowledge about the structure of aerosol bayonet couplings. Thus, the Board gave the expert’s opinion little weight.

A link to the PTAB’s decision is provided here.

PTAB Rejects Assertion that Supplier is a Real Part-In-Interest

In a PTAB decision (IPR2014-01276) on February 17, 2016, the Patent Owner asserted that an IPR trial should be terminated because the Petitioner did properly identify all real parties in interest. However, the Board found that the Patent Owner did not identify who else it contended was a real party in interest. Rather, the Patent Owner merely identified a supplier of the accused products and asserted that the supplier was required to indemnify pursuant to California Commercial Code §2312(3). The Patent Owner provided no explanation, analysis or legal authority supporting why the supplier needed to be identified as a real party in interest.

A link to the PTAB’s decision is provided here.

PTAB Finds Patent Claims Directed to Insurance Claim Valuation Report are Not Patentable under Covered Business Method

In a PTAB decision (CBM2014-00171) on February 19, 2016, the Board found that all claims (1-29) of U.S. Patent No. 7,912,740 were unpatentable under 35 U.S.C. § 101 and anticipated and/or rendered obvious by PCT Publication No. WO 01/071458 A3 (“Reimel”). Further, the Board denied Patent Owner’s motion to substitute new claims for original claims for failing to demonstrate the patentability of the new claims. The ’740 patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.” The claimed method transmits a URL to a client computer and allows an operator to input data relating to an insurance claim for a damaged vehicle. The method processes the entered data to generate a valuation report for the damaged vehicle, the report providing a market value for the damaged vehicle. The method then transmits the valuation report to the client computer. The Board found “that each challenged claim is directed to a fundamental concept of providing a vehicle valuation using information about the vehicle.” The Board noted that “[t]he fact that the claims at issue are nor per se drawn to an algorithm does not insulate them from being found an abstract idea.” Further, the Board “agree[d] with Petitioner’s analysis that the claims do not add additional substantive limitations that transform their nature into patent-eligible application of an abstract idea,” adding that “[t]he only technological features recited in the claims at issue in this proceeding are generic computer implementation systems performing generic computer functions.” In addition, the Board denied Patent Owner’s motion to amend the claims because Patent Owner failed to establish that the proposed amendments are patent-eligible under 35 U.S.C. § 101.

A link to the PTAB’s decision is provided here.

Claim Construction Standard in IPR Proceedings is Outcome Determinative According to the Federal Circuit

In separate decisions, the Federal Circuit reviewed the Board’s claim constructions in four related IPR proceedings. In PPC Broadband, Inc. v. Corning Optical Commc’ns, Nos. 2015-1361, -1366, -1368, -1369, slip op. (Fed. Cir. Feb. 22, 2016), the Federal Circuit reviewed the construction of the disputed claim limitation under the plain and ordinary standard under Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (which the court described as the correct construction) and the broadest reasonable interpretation (BRI). Under Phillips, the court held that the correct construction of the term “continuity member” was a continuous or consistent connection. Under BRI, the court concluded that the Board’s construction—“that the continuity member need only make contact with the coupler/nut and the post to establish an electrical connection there,” without requiring consistent or continuous contact—is the broadest reasonable construction. The court affirmed the Board’s claim construction under the BRI standard and vacated the obviousness findings of certain claims.

In PPC Broadband, Inc. v. Corning Optical Commc’ns, Nos. 2015-1364, slip op. (Fed. Cir. Feb. 22, 2016), the Federal Circuit reviewed the Board’s construction of the term “reside around” under the BRI standard. The court concluded that the Board’s construction was unreasonable because it was based on a generalist dictionary definition without support in the specification. The court held that the broadest reasonable construction was “encircle or surround” even though the construction did not cover all of the embodiments in the specification. The court found that this was a close case under the BRI standard, but it would have been a straight-forward case under the Phillips standard. In addition, the court further stated that “the Supreme Court’s grant of certiorari to consider the propriety of the broadest reasonable interpretation in IPRs will not affect the outcome of this case.”

A link to the Federal Circuit’s decisions are provided here (Nos. 2015-1361, -1366, -1368, -1369) and here (Nos. 2015-1364).

PTAB Denies PGR Petition Because Patent Was a First-Inventor-To-Invent Patent

On February 22, 2016, in PGR2015-00023, the PTAB rejected the petitioner’s argument relating to the effective filing date of the application. The petitioner challenged certain claims on the ground that they were directed to ineligible subject matter under 35 U.S.C. § 101. The filing date of the patent application was January 29, 2010, which makes it an application under the first-inventor-to-invent regime. The petitioner argued the patent was eligible for PGR because an amendment made during prosecution on September 23, 2013, (after the AIA) included new matter that converted the application into a first-to-file application resetting the effective filing date to September 23, 2013. The Board rejected the argument because the relevant statute (35 U.S.C. § 100(i)(1)) does not contemplate that the effective filing date might depend on the date of a later-filed amendment to a claim. The Board concluded that a later-filed amendment does not change the effective filing date of a patent application regardless of whether the amendment is supported by the specification.

A link to the PTAB’s decision is provided here.

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