October 24, 2013

Short-Shrift Analysis of Dependent Claims Costs Patent Challenger in Inter Partes Review Institution

Means-plus-function claim limitations took center stage in Honeywell’s challenge of 20 claims of an HVAC Modulation Technologies patent, with the Board ultimately putting 17 of those claims into an inter partes review trial in Honeywell Int’l Inc. v. HVAC Modulation Tech. LLC (IPR2013-00096), involving U.S. Pat. No. 5,590,642.  The ’642 patent had previously survived an ex parte reexamination proceeding.  Interestingly, the Board did not institute with regard to three of the challenged claims, despite the fact that Patent Owner did not file a Preliminary Response.

The ‘642 patent relates to control systems for burners used in heating, ventilation, and air conditioning (“HVAC”) systems. More specifically, the ‘642 patent discloses a complex system of sensors, modulating gas valves, controllers, and algorithms which allows HVAC systems to operate in various settings and respond to changes in building load.

In light of the absence of a Preliminary Patent Owner Response, the Board’s claim construction analysis was straightforward, with the Board adopting “for purposes of this decision” the constructions proposed by Patent Challenger. The Board then went on to detail how many of the challenged claims were contained within one of the cited prior art references, thus providing the reasonable basis required to institute the trial.

The Board did not, however, include 3 claims in the trial.  With regard to claim 16, for example, the Board found that Honeywell had failed to provide a sufficient and credible explanation as to how the prior art described the features recited in this challenged claim.  It seemed, instead, that Honeywell had short-circuited its analysis by relying on an analysis provided with other claims, but those other claims did not mention all the limitations of claim 16.  No reasonable likelihood was, therefore, found with respect to this claim, based on several potential grounds for challenge.  A substantially similar analysis was performed with regard to claims 17 and 23.

In the end, the Board’s decision is another cautionary tale regarding the need to provide complete analyses and evidence in a Petition to prevail in an inter partes review.  The Board is proving to be meticulous in its analysis and will not overlook even minor errors in its patentability analyses.