January 8, 2014

Preliminary Response that Addresses the Merits of Petition Again Fails in Grant of IPR Trials

Time and again, Patent Owner arguments on the merits in Preliminary Responses have been smothered by expert testimony and other evidence that is allowed with a petition. As such, as IPR practice has evolved, more and more Patent Owners are waiting until the formal Patent Owner response before presenting its arguments. In short, and as the high number of petition grants makes clear, trying to substantively fight a petition at the preliminary response phase is not working. In this fashion, Texas Instruments was able to get 16 challenged claims of a Unifi Scientific Batteries patent into a trial for inter partes review, in a case styled as Texas Instr., Inc. v. Unifi Scientific Batteries, LLC (IPR2013-00213), involving U.S. Pat. No. 6,791,298. Additionally, Samsung was successful in challenging 12 claims of the same Unifi patent in a case styled as Samsung Elec. Co., Ltd. v. Unifi Scientific Batteries, LLC (IPR2013-00236).

The ‘298 patent relates to “monolithically formed battery charging devices” which include at least one step-down DC to DC converter. The idea of the step down converter described by the ‘298 patent is to allow a lower output voltage relative to input voltage, which allows for a greater output current relative to the input current.

In the IPR2013-00213 proceeding, the Board started by considering claim construction issues, including by considering whether of the challenged claims was a limitation on the claims. Finding that the preamble’s recitation of “monolithic battery charger” limited the scope of the invention because it fundamentally described what the claimed apparatus was, not merely an intended use, the Board construed the preamble to have patentable weight. Next, the Board cleared up confusion over what appeared to be an omission of percentage symbols from the claims. Order at 8. Looking to the specification for support, the Board held that the limitation of “from approximately 10 to approximately 95″ would be understood by one of skill in the art to be referencing percentages. Order at 9. To conclude, the Board interpreted the term “monolithically formed” to mean “formed in a single integrated circuit package or wafer die.” Order at 10.

Next, as a threshold matter, the Board dismissed Patent Owner’s argument that the Petition should be denied as incomplete because Patent Challenger contended that the “broadest reasonable construction” should be applied, but provided no explanation for what is that interpretation. While the Board ultimately determined that specific claim constructions were required, the Board found that Patent Challenger sufficiently stated its position. Order at 11.

Turning to the specific art cited by Patent Challenger, the Board addressed three arguments raised by Patent Owner, finding none persuasive. First, the Board discounted the argument that one of skill in the art would not have combined the references of record because one of the references did not teach the type of converter at issue in the ’298 patent. Second, the Board did not agree with Patent Owner’s argument that a combination of the references would destroy the purpose of the converter. Lastly, Patent Owner argued that the prior art taught away from a combination of the references. Importantly, with respect to all of the above arguments, the Board indicated that Patent Owner had not pointed to sufficient and credible evidence. Of course, the formal response, and the ability to provide expert testimony, would give Patent Owner the opportunity to provide that type of evidence. At this stage of the proceeding, however, the evidence was sufficient for Patent Challenger to have met its burden to institute the IPR trial.

IPR2013-00236 was predictably a very similar proceeding, with the Board noting that some of the challenged claims in IPR2013-00236 overlap with those of the IPR2013-00213. The claim construction in the two proceedings was nearly identical and similar arguments were used, resulting in the Board granting the Petition as to all challenged claims. The Board in IPR2013-00213 suggested the parties be prepared to discuss whether the two proceedings should be joined, a suggestion repeated by the Board in IPR2013-00236.

With Patent Owner unable to overcome obviousness arguments heavily supported by expert testimony, Texas Instruments was able to get 16 challenged claims of the ‘298 patent into a trial for inter partes review. In a separate proceeding suggested to be joined, Samsung was able to get 12 claims of the same patent into a separate trial or inter partes review.