As inter partes review (IPR) practice continues to develop and practitioners feel their way around the edges, the last month brought helpful guidance from a trio of forums: the Federal Circuit, the Central District of California, and the Patent Trial and Appeal Board (PTAB) itself. These decisions, particularly the Federal Circuit’s review of the first appeal of an IPR final written decision in Garmin v. Cuozzo, provide clarity on a number of central issues in IPR practice, including the applicable claim construction standard, the appealability of PTAB institution decisions, estoppel and requirements for establishing motivation to combine prior art references. This article addresses these three decisions, and provides takeaways for IPR practitioners
In Re Cuozzo Speed Technologies
The Federal Circuit’s first decision on an inter partes review final written decision not only affirmed the PTAB’s finding, but also affirmed the claim construction standard used in an IPR, and that a decision to institute is final and non-appealable.
On February 4, 2015, the Federal Circuit issued its first opinion on an inter partes review final written decision. In fact, the appeal involved the very first IPR proceeding filed and decided, and addressed several significant issues in IPR practice. In affirming the PTAB’s final written decision analysis, the Federal Circuit held that the “broadest reasonable interpretation” claim construction standard applies to IPR proceedings, and that a decision whether to institute an IPR is not reviewable. The appellate court also affirmed the PTAB’s denial of the patent owner’s motion to amend.
Garmin International, Inc. and Garmin USA, Inc. (Garmin) petitioned the U.S. Patent and Trademark Office (PTO) (IPR2012-00001) for IPR of claims 10, 14 and 17 of U.S. Patent No. 6,778,074 (the ’074 patent). Garmin’s petition alleged that claim 10 was invalid as anticipated under 35 U.S.C. § 102(e) (or as obvious under 35 U.S.C. § 103(a)), and that claims 14 and 17 were obvious under § 103(a). The PTAB instituted IPR, determining that there was a reasonable likelihood that claims 10, 14 and 17 were obvious under § 103 even though the grounds for the instituted review that were specifically stated with respect to claim 17 were not stated for claims 10 or 14.
35 U.S.C. § 312(a)(3) requires that an IPR petitioner “identif[y] . . . with particularity . . . the grounds on which the challenge to each claim is based.” Cuozzo argued that the PTAB improperly instituted IPR on claims 10 and 14 because Garmin did not specifically assert that claims 10 and 14 were invalid under the same grounds as claim 17. Cuozzo further argued that the PTAB is prohibited from instituting an IPR on grounds not identified in the petition because, under § 314(a), “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(d). The Federal Circuit disagreed with Cuozzo, noting that the court had previously held that § 314(d) precludes interlocutory review of decisions whether to institute IPR, in part based on § 319, which authorizes appeals to the Federal Circuit only from the final written decision of the PTAB. St. Jude Medical Inc. v. Volcano Corp., 749 F.3d 1374, 1375 (Fed. Circ. 2014). The Federal Circuit further clarified that not only is the decision to institute IPR not immediately appealable, but such a ruling is final and non-appealable even after a final written decision.
Cuozzo also appealed the PTAB’s finding of unpatentability based in part on the application of the broadest reasonable interpretation (BRI) standard of claim construction. Pursuant to the rule granting authority provided by the America Invents Act (AIA), the PTO provided the claim construction standard upon which patents are to be judged in an IPR: “A claim in an unexpired patent shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). Cuozzo argued that the PTO lacked authority to promulgate § 42.100(b) and that the broadest reasonable interpretation standard is inappropriate in an adjudicatory IPR proceeding.
Once again the Federal Circuit rejected this argument. The court concluded that the broadest reasonable standard had been approved for each PTO examination or proceeding involving unexpired patents, and that there was no indication that the AIA was designed to change this long-used standard. In addition to noting the pre-enactment statement of Senator Kyl contemplating the application of the BRI standard to IPRs, the Federal Circuit disagreed with Cuozzo that an IPR proceeding is different than the legacy proceedings because of the difficult standard for amending claims in an IPR. Even though the opportunity to amend is constrained, the Federal Circuit noted that it is nonetheless available pursuant to 35 U.S.C. § 316(d)(1), and, as a result, the same claim construction standard should apply.
The Federal Circuit next considered the PTAB’s application of the broadest reasonable claim construction standard. The disputed term in claim 10 includes the following limitation: “a speedometer integrally attached to said colored display.” ’074 patent col. 7 l. 10. Cuozzo contended that the broadest reasonable construction should not be applied and the correct construction of “integrally attached” should be broader than that afforded by the PTAB. Cuozzo argued that the board’s construction improperly excluded an embodiment of the invention. However, according to the Federal Circuit, the term “integrally attached” was added to the claims during prosecution. The exact phrase is not used in the specification, and the specification supported the PTAB’s construction. The Federal Circuit also found that the PTAB’s finding of obviousness was supported by substantial evidence and that Cuozzo did not offer any secondary considerations arguing against a finding of obviousness.
Finally, in addressing the PTAB’s denial of Cuozzo’s motion to amend, the Federal Circuit held that Cuozzo’s proposed substitute claims would improperly broaden the scope of the original claims. The court used the same test previously applied in reissues and reexaminations, which provides that the amended claims are impermissibly broader in scope than the original claims if the amendment contains within its scope “any conceivable apparatus or process which would not have infringed the original patent” (citing Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987) (reissue), and In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994) (reexamination). The court concluded that because the proposed claim would encompass an embodiment not encompassed by the originally issued claim, the amendment was held to be broadening, and that the motion to amend was properly denied.
Cuozzo is notable as the first Federal Circuit decision on appeal of an IPR final written decision involving critical issues of the appealability of institution decisions and whether the broadest reasonable claim construction standard is proper in an IPR. In resolving these issues (at least for now), the decision provides important guidance to post-grant proceedings practitioners as to these fundamental aspects of IPR practice.
Star Envirotech, Inc. v. Redline Detection, LLC
The inter partes review estoppel provision, with respect to prior art asserted, did not apply to an assertion that a product rendered a patent invalid when an owner’s manual, used in the IPR, did not specifically describe an element of the product.
The District Court for the Central District of California recently ruled on the unique interplay between inter partes review and district court litigation.
In Star Envirotech, Inc. v. Redline Detection, LLC, Star Envirotech filed an action against Redline Detection, alleging infringement of U.S. Patent No. 6,526,808 (the ‘808 Patent). Star Envirotech, Inc. v. Redline Detection, LLC, et al., No. 12-01861 (C.D. Cal. 2012). The ‘808 patent was previously the subject of two ex parte reexaminations. During the first reexamination, claim 9 was rejected and amended, and claim 10 was added (No. 90/009,683). Both claims ultimately were allowed. Claims 9 and 10 were again deemed patentable in the second reexamination (No. 90/011,916). Redline Detection filed a petition for inter partes review (IPR), seeking to invalidate claims 9 and 10 on 12 separate grounds under § 103. IPR2013-00106. Despite the two successful examinations of claims 9 and 10 (and one of the asserted references having been reviewed upon examination of the claims), the PTAB initiated the IPR based on new combinations of the previously considered reference with new supporting evidence and arguments that were not previously before the office.
In a final written decision, the PTAB found that Redline failed to show that claims 9 and 10 were unpatentable (Paper No. 66). Specifically, the PTAB found that, for the two grounds on which the IPR was granted, the evidence of record did not provide a sufficient reason for one skilled in the relevant art to substitute teachings of the primary reference with that of either of the secondary references relied upon.
Armed with this decision from the PTAB, Star Envirotech sought to strike seven references that were cited in Redline’s Preliminary Invalidity Contentions, based on the IPR estoppel provision set forth in 35 U.S.C. § 315(e)(2). Under this statute, a defendant in a district court litigation case may not assert that the claim(s) subjected to the IPR (that results in a final written decision) are invalid on any ground that the defendant could have raised or reasonably could have raised during the IPR. Star Envirotech argued that Redline raised or reasonably could have raised the seven references at the IPR, and therefore defendants were estopped from raising them in the litigation under § 315(e)(2). In particular, Star Envirotech contended that one of Redline’s asserted invalidity combinations that included a product made by the Star Envirotech should be stricken. Although the specific product could not have been used as a reference in an IPR (only patents and printed publications may be used), Star Envirotech argued that the product’s owner’s manual, a printed publication available to Redline at the time of the IPR’s filing, could have been asserted. As a result, Star Envirotech argued that the product could not be used as prior art.
The district court denied Star Envirotech’s motion. The court found that the specific product referenced by Redline, alleged to disclose the features claimed in the ‘808 patent, included features that were not referred to in the owner’s manual. This distinctiveness of the owner’s manual over the product was undisputed, as the owner’s manual did not specifically describe the internal “closed smoke producing chamber” element of the product, which was also an element of claim 9 of the ‘808 patent. Thus, the court concluded that although the product may anticipate certain features of the ‘808 patent, the corresponding owner’s manual did not include discussion of at least one of the features. As a result, Redline was not estopped from asserting the product as an invalidity combination.
It is unclear to what extent the owner’s manual would have needed to disclose the various aspects of the product before the district court might have estopped Redline’s use of the product as prior art. What seems clear from this holding is that an actual product may provide an IPR petitioner a potential standby invalidity ground in the event that a claim is found not to be unpatentable in an IPR final written decision.
Wright Medical Technology, Inc. v. Orthophoenix, LLC
An expert declaration must state, with sufficient particularity, an articulated reason as to why one skilled in the art would be motivated to combine prior art references.
A recent PTAB decision denying institution of an IPR provides a reminder for patent practitioners to consider the obviousness framework set forth in Graham v. John Deere Co. (and affirmed by KSR) prior to filing an IPR petition.
Wright Medical Technology, Inc. filed an IPR petition seeking to invalidate multiple claims of U.S. Patent No. 6,863,672 (the ‘672 patent), owned by Orthophoenix, LLC. IPR2014-00912. In support of the petition, Wright Medical relied on an expert declaration to support its claims of obviousness. The primary reference (Shapiro) disclosed a surgical tool that could be used to remove or “expose the spinal nerves,” whereas the claims of the ‘672 patent disclosed methods of using a laminectomy tool suitable for cutting cancellous bone. The expert declaration attempted to explain that the tool taught by the Shapiro could also be used, and would be understood by one skilled in the art, to cut cancellous bone.
Orthophoenix filed a preliminary response, arguing in part that the petition failed to specify how or why one of ordinary skill would have adapted the teachings of a primary reference to arrive at the claim limitations.
|Annotated FIG. 5 of Shapiro (Petition at p. 13)||FIG. 25 of the '672 Patent|
The PTAB agreed with Orthophoenix and denied the petition. The PTAB found that, although the expert testimony offered by Wright Medical explained that the tool taught by the Shapiro could be used to cut cancellous bone, the declaration did not provide sufficient reasons why it would have been obvious to do so.
Wright Medical serves as an important reminder that, in asserting invalidity under § 103, it is important to provide articulated reasoning as to why one skilled in the art would be motivated to combine prior art references in addition to asserting that the combination is possible. In this instance, for example, it may have been beneficial to discuss and provide evidence that the benefits of the surgical tool taught by Shapiro as it would relate to cancellous bone would have been recognized by the person of ordinary skill in the art, rather than cataloging the surgical tool’s capabilities.