49 reasons why IPR petition denied-Filing of an IPR petition more than one year!
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Although Most PTAB IPR Petitions are Granted, There Have Been Petitions Denied and the Reasons for Denial Vary
Although Most PTAB IPR Petitions are Granted, There Have Been Petitions Denied and the Reasons for Denial VaryFebruary 1, 2015 3:59 PM
A very large majority of IPR petitions (about 90%) have been granted , but the Board has denied petitions for a range of reasons including simple failure to identify all claim limitations in the cited prior art, inadequate expert report, claim construction, bar date violation, apparent failure under §112 and others. This memo provides a brief summary of each IPR petition which has been denied and the reason for the denial.
The petitioner challenged the validity of claims 1 – 14 and 17 – 20 of USPN 6,947,882. The ‘882 Patent has a total of 20 claims, with independent claims 1 and 5. The petitioner’s invalidity contentions included both §102 and §103. The Board construed the meaning of the claim term “independent clock signals” and determined that independent clock signals must be derived from different sources, and further that, contrary to petitioner’s argument, “asynchronous” does not mean “independent”. The Board concluded that the petitioner had not shown that this claim limitation, as construed by the Board, was present in the prior art relied on by the petitioner. Therefore, the petition was denied.
The petitioner challenged claims 1 – 9 and 13 – 16 of USPN 5,862,511. This patent has 17 claims, 14 of which are independent. The petitioner’s contentions included invalidity for both §102 and §103. The Board construed only one phrase “orthogonal axes accelerometer” as “a device that measures acceleration along at least two orthogonal axes.” All other terms were deemed to have ordinary meaning. For each claim, the Board analyzed the prior art, a single reference or combination of references, and found that at least one of the claim elements was missing. As a result, the petition was denied.
The petitioner requested review for multiple claims of USPN 8,051,287 under §103. The technology relates to establishing an encrypted communication session. A critical claim construction term is “pre-defined”. The plain and ordinary (dictionary) meaning is “to define or determine in advance”. The petitioner did not explain the relevance for many of the noted prior art references. The petitioner referred to blocks of text (16 pages) in the prior art without specifically identifying what corresponds to the claim elements. The petitioner alleged that “preexisting” corresponds to “pre-defined”, but the Board disagreed. For each alleged invalid claim, the Board found that the petitioner had failed to show at least one claim element in a prior art reference. Therefore, petition denied.
The petitioner, Monsanto, challenged the patentability of claims 1-7 of USPN 5,518,989. This patent has a total of 7 claims, with only 1 independent claim. The claims were argued to be invalid under both §102 and §103 grounds. The claim requires plant defoliation to a range from about 600 to about 800 GDDs and enhanced seed vigor. Monsanto relied on an expert report to show inherency for claim limitations not literally described in the prior art references. Because the petitioner’s expert did not provide sufficient underlying data for his conclusions, the Board did not credit the expert with respect to his GDD calculations and conclusions. For this reason, the Board ruled that Monsanto failed to demonstrate a reasonable likelihood that the prior art would render any challenged claim unpatentable. Therefore, the petition was denied.
The petitioner challenged claims 1 – 11 (all claims) of USPN 6,162,974. The alleged grounds of invalidity were both §102 and §103. The claim requires defoliation to a range from about 600 to about 800 GDDs and enhanced seed vigor. Monsanto relied on an expert report to show inherency for claim limitations not literally described in the prior art. Because the petitioner’s expert did not provide sufficient underlying data for his conclusion, the Board did not credit the expert with respect to his GDD calculations and conclusions. For this reason, the Board concluded that Monsanto failed to demonstrate a reasonable likelihood that the prior art would render any challenged claim unpatentable. Therefore, the petition was denied.
The challenged claims were 1-12 of USPN 8,018,348, which are all claims of the patent. There are two independent claims, one apparatus and one method. The alleged grounds of invalidity were both §102 and §103. The petitioner alleged that a specific element in the prior art corresponded to the claim term “signal generating test apparatus”, but the Board noted that the identified element in the prior art reference was a signal receiver, not a signal generator. The Board went on to point out that the petitioner had failed to identify other limitations in the patent claims in the prior art. The Board stated that the citations made by the Petitioner to the prior art “lack detail and explanation”. Therefore, the petition was denied.
The challenged claims were 6, 8 and 9 of USPN 6,218,930. This patent has a total of 9 claims. Claims 1 and 6 are the independent claims, respectively apparatus and method. Claims 1 – 5 and 7 were not challenged. The alleged grounds of invalidity were both §102 and §103.
The petitioner challenged claims 5, 9, 11 and 12, which are all of the independent claims of USPN 6,489,589. This patent has a total of 12 claims. The basis of invalidity was both §102 and §103. All of the independent claims include the phrase “material removal with both linear and non-linear processes.” The Petitioner argued that the Examiner had concluded that this phrase did not constitute a limitation of the claim, and should therefore be ignored. Alternatively, the petitioner argued that this should mean a specific laser intensity related to a disclosed embodiment. The Board concluded that the term was not defined in the patent and that it did not have a meaning to a person of ordinary skill in the art. As a result, the Board determined that the prior art could not show a limitation which could not be defined, and the petition was therefore denied.
The petitioner contended that claims 1 – 3, 29 and 35 of USPN 5,978,791 were invalid under both §102 and §103 over a single reference. The Board concluded that the Petitioner was barred from filing the petition because it had been served with a complaint alleging infringement of the patent more than one year before the filing of the petition. To overcome this anticipated basis of rejection, the Petitioner requested joinder to an earlier filed petition pursuant to 35 USC §315(c). The Board rejected this argument because the present petition was not identical to the earlier petition, but added a new claim and new grounds for invalidity. Therefore, the petition was denied.
The petitioner alleged invalidity of claims 5 – 7 and 9 of USPN 5,515,369. This patent has a total of 10 claims. Claim 5, a method claim, is independent and claims 6, 7 and 9 are dependent to Claim 5. The basis of invalidity was both §102 and §103. The Board construed the claim terms “channel punchout mask” and “unique seed value.” The Board concluded that the prior art alleged by petitioner to invalidate the claims did not disclose these elements, as construed by the Board. Therefore, the petition was denied.
The petitioner contended that claims 6, 8 and 9 of USPN 6,218,930 were invalid under both §102 and §103 over multiple references. The petitioner had been sued for infringement more than one year before the filing date of the petition. Petitioner moved for joinder with an earlier filed petition for the subject patent. But the new petition added numerous new grounds not present in the earlier petition. The Board concluded that the petitioner did not demonstrate that its need for an alternative to district court litigation outweighed the burden and prejudice to the existing parties due to the addition of issues in the new petition. Therefore, the petition was denied.
The petitioner challenged claims 1 and 10 of USPN 7,582,051, which has a total of 44 claims. Claims 1 and 10 are independent apparatus claims. All allegations of invalidity were bases on §103. The Board ruled that the petitioner had not provided a sufficient justification for selecting and combining the features from the multiple prior art references. In addition, the petitioner did not identify that one of the claim elements was present in any of the references relied upon. No terms were construed. Therefore, due to this failure by the petitioner, the petition was denied.
The patent-in-suit (USPN 7,254,682) has a total of 29 claims. In this petition, it was alleged that claims 4, 6-9, and 11 were invalid under both §102 and §103 for a group of prior art references. Claim 4, a method claim, is independent and the remaining challenged claims depend from Claim 4. Contrary to the petitioner’s allegation, the Board concluded that the operation of selecting an entire group of items did not comprise a disclosure of “selecting a desired item” as recited in the claim. “Item” was construed to mean a “file or folder”. The claim term “image” was construed to mean “a backup created in a block-by-block manner, not a file-by-file manner”. The Board concluded that the prior art identified by the petitioner did not disclose all of these claim elements,as construed by the Board. Therefore, the petition was denied.
The patent-in-suit (USPN 7,254,682) has a total of 29 claims. In this petition, it was alleged that claims 1, 3, 26 and 27 were invalid under both §102 and §103 for a group of prior art references. Claim 1, a method claim, is independent and Claim 3 is dependent on Claim 1. Claim 26 is an independent apparatus claim and Claim 27 is dependent on Claim 26.
The petitioner contended that claims 13 and 16 of USPN 7,191,299 were invalid under §103 in view of various combinations of four prior art references. The Board concluded that the cited prior art did not disclose all of the limitations of the claims-at-issue.
The petitioner requested review of claim 16 – 18 of USPN 6,217,049. The patent is involved in concurrent district court litigation. The basis of the challenge is both §102 and §103 over multiple references. 13 grounds of invalidity were urged. The petitioner filed an original petition and later filed what was deemed a “corrected petition” with substantial changes to the petition and to the supporting expert report. The Board refused to accept the “Corrected Petition” and evaluated only the original petition. The Board determined that certain claim terms in the preamble were limiting. The Board evaluated each alleged ground of invalidity and determined that claim limitations were missing from all asserted grounds. Therefore, the petition was denied.
The petitioner challenged claims 1 – 20 (all claims) of USPN 7,827,099 under both §102 and §103 over multiple references. Neither party construed the claim limitation “real time”, but the Board did construe this term. The Board concluded that this term, and other claim limitations were not disclosed as alleged by the petitioner in the prior art. The Board also concluded that the petitioner has not presented a sufficient rationale for combining references for obviousness. Therefore, the petition was denied.
The petitioner challenged claims 1 – 24 (all claims) of USPN 8,005,752 under both §102 and §103 over multiple references. The Board determined that many grounds did not show all of the claim limitations, and that the petitioner did not provide a sufficient rationale for combining references for §103 invalidity. Therefore, petition denied.
The petitioner challenged claims 1 – 20 (all claims) of USPN 8,086,529 under both §102 and §103 over multiple references. The Board concluded that the petitioner had not shown that all of the claim limitations were shown in the cited prior art references. The Board also concluded that the petitioner has not presented a sufficient rationale for combining references for obviousness. Therefore, the petition was denied.
The petitioner challenged claims 1 – 20 (all claims) of USPN 8,095,461 under both §102 and §103 over multiple references. The Board concluded that the petitioner had not shown that all of the claim limitations were shown in the cited prior art references. The Board also concluded that the petitioner has not presented a sufficient rationale for combining references for obviousness. Therefore, the petition was denied.
The petitioner challenged claims 1 – 11 (all claims) of USPN 8,396,791 under both §102 and §103 over multiple references. The Board concluded that the petitioner had not shown that all of the claim limitations were shown in the cited prior art references. The Board also concluded that the petitioner has not presented a sufficient rationale for combining references for obviousness. Therefore, the petition was denied
The petitioner alleged that claims 1, 10, 12 and 16 of USPN 5,614,906 were invalid under §101 and §103 in view of multiple references. The Board construed the claims in a manner not raised by the petitioner. The Board concluded that the claims, as construed by the Board, did not read on the cited prior art and that one “means” claim did not have support in the specification, and therefore could not be construed.
The patent-at-issue is USPN 5,414,426, which has 13 claims. The petitioner challenged claims 1 – 5, 10 and 13, which includes all of the independent claims, as invalid. Due to prior litigation in which the petitioner was involved with the patent-in-issue, and which was dismissed with prejudice, the Board ruled that the petitioner is barred from filing an inter partes review petition under 35 U.S.C. §315(b). This provision bars the filing of an IPR petition more than one year after service of a complaint on the petitioner. Therefore, the petition was dismissed as not timely filed.
The petitioner alleged invalidity of claims 2 – 66 and 68 - 75 of USPN 5,972,401. The Board dismissed the petition under 35 U.S.C. §315(a)(1). “An inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” The petitioner had filed an action for invalidity more than one year prior to the petition filing date. The petitioner argued that the statute required that the action be both “filed and served”, but the Board disagreed.
The petitioner alleged that design patent D527,834 was invalid under both §102 and §103 over multiple references. The petitioner prepared its own drawings of the alleged prior art for its allegation of invalidity. The Board refused to accept these drawings, but instead used only the actual cited prior art documents. The Board concluded that the submitted prior art did not invalidate the claimed designs in the patent. Therefore, the petition was denied.
Petitioner filed to invalidate claims 1 – 11 and 23 – 39 of USPN 7,225,160 under both §102 and §103 over multiple references. The Board denied the petition for multiple reasons, including (1) the petitioner had previously filed a petition for the same patent and that petition had been denied, (2) this petition is time barred pursuant to 35 USC §315(b), (3) the contemporaneously filed motion for joinder is denied and (4) the grounds raised in this petition are substantially the same as in the previously filed petition.
The petitioner alleged that claims 1 – 22 of USPN 7,772,209 were invalid. The Board concluded that the Petitioner was barred from filing the petition because it had been served with a complaint alleging infringement of the patent more than one year before the filing of the petition, therefore the petition is time barred pursuant to 35 USC §315(b).
The petitioner challenged the validity of claims 10 20 of USPN 7,134,994. The petitioner had been sued and served with a counterclaim for infringement of the subject patent more than one year before the filing of the petition. The Board held that the petition was time barred under USC §315(b). .
The petitioner contended that claims 1 and 4 of USPN 6,799,084 are invalid as anticipated and obvious over multiple prior art references. The petitioner moved to join the present petition with a previously filed petition. But, the earlier proceeding was terminated so that there is now no earlier proceeding to join. Therefore, the petition is denied.
Petitioner challenged the validity of claims of USPN 6,799,084. The Board denied a motion for joinder to an earlier filed petition for the same patent and concluded that this petition was barred by 35 USC §315(b).
The petitioner contended that claims 1, 11 and 14 were invalid. The invention is an automatic drilling system for oil wells. This patent has expired. The Board construed three claim terms, one construed in a manner substantially different from that proposed by the petitioner. But, the Board concluded that one combination of references did teach all elements of one set of claims. But, the patent owner submitted evidence of secondary considerations and this countered the obviousness finding.
The petitioner contended that claims 1 – 55 of USPN 7,425,292 were invalid. The Board determined that the petition had not been filed within the one-year period set forth in 35 USC §315(b). The argument made by the petitioner was that the patent completed a reexamination in which all claims were changed, and therefore was a new patent, not the one asserted in the prior litigation. The Board disagreed and stated that any changes to the claim are not material to the bar date statute.
The petitioner contended that claims 10 -28 of USPN 7,357,891 were invalid. The Board determined that the petition had not been filed within the one-year period set forth in 35 USC §315(b). The argument made by the petitioner was that the patent completed a reexamination in which all claims were changed, and therefore was a new patent, not the one asserted in the prior litigation. The Board disagreed and stated that any changes to the claim are not material to the bar date statute.
The petitioner contended that claims 1 – 21 of USPN 5,686,738 are invalid under both §102 and §103. The only claim term construed was “non-single crystalline” which is present in all of the challenged claims. For the §102 challenge, the petitioner did not allege that all of the claim elements were present in the noted prior art. The petitioner’s §103 arguments were deemed non-persuasive. The Board implied that the petitioner’s inherency arguments should have been proven by actual tests.
The petitioner contended that claims 1-7 of USPN 5,817,364 were invalid as obvious. The claims are directed to a chemical composition for an energy drink. Only one term was construed. The Board disagreed with the construction offered by the petitioner for this term and provided its own construction. The petitioner’s arguments were not found to be persuasive and many of the petitioner’s arguments were not clear or understandable to the Board.
The petitioner contended that claims 1 – 12 of USPN 7,389,836 were invalid under §103. The invention is a motorized shopping cart retriever with attenuated power output. Neither party proposed claim constructions, so the Board said all terms take on their ordinary and customary meaning, and that no term needs to be construed expressly. The petitioner alleged only §103 grounds of invalidity. The Board determined that the claim limitation “second power limit” was not disclosed in the prior art as alleged by the petitioner. Therefore, the petition was denied.
The petitioner contended that claims 1- 12 of USPN 7,389,836 were invalid as obvious. The claims of the patent are directed to labeled nucleotides and nucleosides. The Board has previously granted review of the same claims on essentially the same prior art in an earlier filed IPR. Because the same or substantially same issues are in the prior IPR, this petition is denied.
The petitioner contended that claims 1 – 10 of USPN 8,285,678 B2 were invalid under both §102 and §103. The invention is a method of providing automatic version control to a business intelligence system. The petitioner alleged invalidity under both §102 and §103. The Board construed two terms. The Board was not persuaded that all of the claim elements were shown in the prior art, as alleged by the petitioner.
The petitioner contended that claims 1 – 20 of UPN 7,505,592 B2 were invalid under both §102 and §103. The invention relates to subscriber television systems and to providing programming to remote devices via a local area network at a subscribers’ location. The petitioner alleged invalidity under both §102 and §103. The Board construed three terms. The Board concluded that none of the combinations of references cited by the petitioner disclosed all of the claim elements for each claim.
The petitioner contended that claims 1- 21 of USPN 7,493,979 were invalid as obvious (§103). The invention is a motorized shopping cart retriever. A parent of this patent was the subject of a prior IPR petition, which was denied. All asserted invalidity grounds are §103. Neither party proposed claim constructions. The Board determined that all claims have the ordinary and customary meaning. The Board concluded that none of the combinations of references cited by the petitioner disclosed all of the claim elements.
Petitioner asserted that claims of USPN 6,502,135 were invalid The Board dismissed the petition pursuant to 35 USC §315(b).
Petitioner asserted that claims of USPN 6,502,135 were invalid The Board dismissed the petition pursuant to 35 USC §315(b).
Petitioner asserted that claims of USPN 7,490,151 were invalid The Board dismissed the petition pursuant to 35 USC §315(b).
Petitioner asserted that claims 1 – 28 of USPN 8,342,784 were invalid under both §102 and §103. The technology is a collapsible intermodal transport platform, relating to freight containers. The Board disagreed with the petitioners constructions for claim terms. The petitioner did not specifically identify what parts in the prior art corresponded to claim elements. Therefore, petition denied.
The petitioner challenged the validity of claims 14 – 25 of USPN 8,353,647 under both §102 and §103. The technology of the patent is transport containers as used for moving cargo in multiple modes such as railroad, truck or ship. The Board construed the term “stacking block” and concluded that the petitioner had not shown that this element was present in any of the relied-upon references. Therefore, the petition was denied.
The petitioner challenged the validity of claims of USPN 7,418,504. The Board concluded that the petition was time barred under 35 USC §315(b).
The petitioner challenged the validity of claims of USPN 7,418,504. The Board concluded that the petition was time barred under 35 USC §315(b).
The petitioner challenged the validity of claims of USPN 7,921,211. The Board concluded that the petition was time barred under 35 USC §315(b).
The petitioner challenged the validity of claims of USPN 7,921,211. The Board concluded that the petition was time barred under 35 USC §315(b). |
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