March 11, 2014
Four More IPR Final Written Decisions Go Against Patent Owners
On Monday, March 10th, the PTAB issued four additional Final Written Decisions, each of which resulting in total victory for the Petitioner. The first three were all related – Micron Tech., Inc. v. Board of Trustees of the Univ. of Ill., IPR2013-00005, -00006, and -00008. The fourth is styled as Xilinx v. Intellectual Ventures I LLC, IPR2013-00029.
In general, the Micron Tech. cases involve straightforward obviousness analyses, comprising a combination of two to three references to make out a prima facie case of obviousness. Of interest, though, was the Board’s discussion of secondary considerations. On the issue of unexpected results, the Board discounted Patent Owner’s evidence because Patent Owner failed to compare the results of the claimed invention to the closest prior art. See, e.g., -00008 Order at 19-20. On the issue of failure by others, again the Board discounted Patent Owner’s evidence because it failed to account for the prior art teachings of the closest prior art. Id.
The Xilinx case involves a continuation of an ongoing battle between Xilinx, Inc. and Intellectual Ventures that has already resulted in Final Written Decisions against four Xilinx patents. In this proceeding, Xilinx gains a bit of revenge by knocking out the three challenged claims of an IV-owned patent. Of interest in this case was the Board’s decision to “slightly” modify its earlier claim construction for “light-shutter matrix system.” Order at 8-12. In general, the Board undertook a more detailed evaluation of the term, including referencing a dictionary definition, to come up with a broadest reasonable interpretation to be used in the Final Written Decision. Ultimately, after disposing with several other claim construction issues, the Board determined that two combinations of art rendered the challenged three claims unpatentable.
Also of note was the Board’s denial of yet another Motion to Amend. In this case, Patent Owner argued that all claims should be given their ordinary and customary meaning. But, because Patent Owner did not provide specific claim constructions for two of the limitations added to the proposed claims, the Board found that Patent Owner had not met its burden. More specifically, the Board found that “interpreting both phrases is critical to determining whether the proposed substitute claims are patentable…” Order at 41.
With MLB Spring Training in full swing, it is worth noting that Patent Owners are batting .000 in Motions to Amend to date.