After some exhaustive internet searching, you just found the perfect prior art reference for your case. It’s an article with a vintage prior to your critical date, and, more importantly, it appears to anticipate or render obvious every claim of the patent asserted against you. Time to file your IPR, right? Not so fast. With the ubiquity of information on the internet today, it’s difficult to imagine a time when information was less accessible. Because of this, we sometimes overlook the availability of a reference when determining whether it qualifies as a prior art “printed publication” under 35 U.S.C. § 102. Last month, we saw this issue take down an IPR at the institution stage, and, more recently, this issue turned out to be case dispositive in a Final Written decision. Here, in Activision Blizzard, Inc. v. Acceleration Bay, LLC (IPR 2015-01964), the Board concluded that the lone prior art reference asserted in the petition, a technical report reference, was not readily available as a printed publication under 35 U.S.C. § 102.
A party may join an already filed inter partes review (IPR) petition under 35 U.S.C. § 315(c). This may be done to avoid the one-year statutory bar or to ensure that the petitioner can maintain the IPR if the parties to the previously filed IPR settle.
But there is no right to joinder; 35 U.S.C. § 315(c) permits the Director to join a party “in his or her discretion.” In permitting joinder, the Patent Trial and Appeal Board (PTAB) considers whether joinder will unduly delay or detrimentally affect the previously filed IPR, and whether the new petitioner delayed filing its request for joinder. Thus, to facilitate joinder, parties often copy the petitions from the previously filed IPR, and explain that they will adhere to the established schedule and take a back seat or “understudy role” to the previous filer.
A PTAB panel recently provided further guidance to the “printed publication” requirement for IPR.
The types of information that can serve as bases for a validity challenge in an IPR are limited to “patents and printed publications.” Not surprisingly, petitioners have sought to expand the kinds of materials that can serve as “printed publications.” Examples include website article printouts, website postings by a car enthusiast, instructional videos, and patent applications stored on microfilm. In any case, petitioners must show that the “publication – of whatever kind – has in fact been disseminated or has otherwise been reasonably available and accessible to persons concerned with the relevant art.”
Recent decisions by the Patent Trial and Appeal Board (PTAB) and the Federal Circuit have left patent owners with some uncertainty as to whether their patents could be subject to review and invalidation under the America Invents Act’s Covered Business Method (CBM) review process.
The AIA created CBM review to provide an opportunity for petitioners to challenge a patent’s validity before the PTAB if the challenged patent pertains to “a financial product or service” that is not “technological.” The statute itself provides little insight regarding what a non-technical “financial product or service” entails. Moreover, unlike in IPR where patents can only be challenged as being anticipated or obvious over patents and printed publications, CBM review allows patents to be challenged on nearly any ground that could otherwise be asserted in district court litigation. Therefore, it is paramount that patentees and patent challengers alike understand which financial products or services-related patents may be susceptible to CBM review.
We know that this is a PTAB blog. But sometimes we like to comment on a new Supreme Court opinion in the patent field—even if the issue could only come up in patent infringement litigation and not in a PTAB invalidity proceeding. So bear with us.
On February 22, the Court issued its decision in Life Technologies Corp. v. Promega Corp. The issue was whether a manufacturer of genetic testing toolkits could be liable for infringement where only one of the five key components—albeit an important one—was manufactured in the United States. The Court construed section 271 (f)(1) of the Patent Act, which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combination abroad. Resorting to classic tools of statutory construction, the Court said that the section of the law required a quantitative analysis—and “all or a substantial portion” could never be merely one component in a multi-component accused product.
Note that another section of the Patent Act—271(f)(2)—would allow an infringement suit where only one component was manufactured in the United States, but only where that single component is “especially made or especially adapted for use in the invention and is not a staple article or commodity.”
Now back to PTAB blogging!
This post focuses on public accessibility. To show this, the proponent must evidence that the publication was sufficiently disseminated, or otherwise made available such that a person of ordinary skill in the art (POSITA), exercising reasonable diligence, could locate it. This standard is somewhat ambiguous, but recent decisions have shown that the PTAB has been applying it quite strictly. For example, the fact that a printed publication is shown to be posted and retrievable over the internet does not mean that the reference is per se accessible by a POSITA, as held in Blue Calypso v. Groupon (Fed. Cir. 2016). There, despite testimony that the printed publication (a graduate student’s report) was posted online, the PTAB held, and the Federal Circuit affirmed, that there was no proof that the reference was actually viewed or downloaded by an interested artisan, and therefore refrained from considering its information.
In Arctic Cat, Inc. v. Polaris Industries, Inc. (IPR2015-01789), the Board again examined secondary considerations of non-obviousness but found them to be unpersuasive because “the claims capture features largely well-known in the art” and the commercial embodiments “[include] important unclaimed features.” In stark contrast to the simple bottle cap in World Bottling Cap v. Crown Packaging Technology, the alleged commercial embodiments of the claimed invention in this case are complex vehicles – the Polaris RZR XP 900 and XP 1000. As secondary considerations of non-obviousness, the Patent Owner asserted both commercial success and industry praise of these Polaris vehicles.
To show nexus, the Patent Owner provided claim charts mapping all the features of certain claims to the Polaris vehicles. Further, the Patent Owner cited to “significant sales” of the Polaris vehicles as commercial success, and provided several advertising brochures and literature touting various benefits of these vehicles. The Patent Owner relied on, for example, the Polaris vehicles’ “rear suspension,” as claimed in the patent, as being a part of their success.
Obviousness can be an unpredictable ground for challenging the validity of a patent. Superficially, obviousness may appear to be somewhat subjective, but it must be based on objective facts that prove that the combined references really can operate together. The courts and PTAB continue to refine the obviousness standard, clarifying how to fall under an appropriate obviousness rationale. Two recent cases from the Federal Circuit and PTAB show how not to argue a proposed modification or substitution. The takeaway message from these cases is loud and clear: to establish obviousness, articulate good reasoning for why a person would have combined prior art elements to arrive at the claimed invention and show that the combination actually works.
Almost 10 years ago, the Supreme Court in KSR confirmed that whatever the rationale used in an obviousness analysis, mere conclusory statements cannot suffice. Instead, there must be some explicit, articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. The Court advised that it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the prior art elements in the way the claimed invention does. More than ever before, this guidance is relevant in establishing obviousness, as shown in the following two cases.
In World Bottling Cap v. Crown Packaging Technology, the PTAB relied upon the patent owner’s “compelling evidence of secondary considerations” to uphold the patentability of a bottle cap patent. The patent claimed a seemingly simple invention, a bottle cap made from steel that is thinner and harder compared to that of conventional caps. All elements of the claims were disclosed by the prior art, and the parties agreed that the purported advantage of the invention, the use of less steel per cap (referred to as “lightweighting”), was a known industry trend. In many cases, this would be the end of the road for the challenged claims. However, the PTAB weighed the patent owner’s evidence of secondary considerations against the petitioner’s prima facie case of obviousness and, in a rare instance, found that secondary considerations saved the day for the patent.
The PTAB found there was a strong correlation between the claimed invention and the proffered secondary considerations. It noted that the patent owner’s evidence of nexus (inventor testimony and documents listing specifications for the commercial caps) showed that the claimed invention was the entirety of the commercial product and not just a subcomponent. Accordingly, the PTAB “consider[ed] the evidence of the success and praise of the [commercial] cap as direct evidence of the success and praise of the claimed invention.”
Under the AIA statute, anyone may file an IPR petition with the PTAB. So presumably anyone who challenges a patent in IPR and loses can appeal to the Federal Circuit, right? As one of my fellow bloggers would say, “Not so fast, my friends!”
While anyone may file an IPR petition, not all may pursue an appeal of an adverse PTAB decision. According to a recent decision by the Federal Circuit, a petitioner must prove that it has a concrete stake in the outcome of the proceeding in order to have standing on appeal. While standing is not necessarily required to appear before an agency (like the PTAB), it is a requirement for pursuing an appeal of an agency decision in federal court.