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Fitch Even Counsel Ken Hairston Published in Law360

August 13, 2015

An article written by Fitch Even counsel Kenneth W. Hairston was published today in the “Expert Analysis” section of daily legal e-newsletter Law360 and on their website. In the article, “PTAB Answers Prior Art Questions Raised by Idle Free,” Ken provides commentary on the Patent Trial and Appeal Board’s recent order in MasterImage 3D Inc. v. RealD Inc. and how it responded to prior art questions raised by Idle Free Sys., Inc. v. Bergstrom, Inc. The full text can be found below.

Ken, a former longtime Administrative Patent Judge, currently counsels clients on complex patent prosecution matters and patent office appeals, as well as administrative post-grant patent challenges.


PTAB Answers Prior Art Questions Raised by Idle Free 

More than two years ago, the Patent Trial and Appeal Board (PTAB) set forth the ground rules for filing a motion to amend in Idle Free Sys., Inc. v. Bergstrom, Inc.1 The ground rules clearly placed the burden on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. The sentence immediately following this directive stated that “[s]ome representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims” (emphasis added). 

The noted motion to amend ground rules set forth in the Idle Free case led to much confusion in the bar as to (1) what prior art did the patent owner have to discuss in the motion to amend, (2) whether testimonial evidence was required to be presented with the motion to amend, and (3) what prior art references had to be discussed in the motion to amend and the testimonial evidence. Some members of the bar felt that every reference known to man had to be addressed. Others felt that a new prior art search should be conducted to address the proposed new limitation(s). Since a post-grant proceeding is primarily a battle of the experts, it was assumed that an expert was needed to buttress the motion to amend.

The “prior art” questions raised by the Idle Free ground rules were recently answered by the PTAB in a clarification order issued by an expanded panel in MasterImage 3D, Inc. v. Reald Inc.2 With respect to the “prior art of record” in Idle Free, the MasterImage 3D order indicated that it should be understood as referring to any material prior art: in the prosecution history of the patent; of record in the current proceeding, including art asserted in grounds on which the PTAB did not institute review; and of record in any other proceeding before the U.S. Patent and Trademark Office (“the Office”) involving the patent. And with respect to the “prior art known to the patent owner” in Idle Free, the MasterImage 3D order indicated that it should be understood as “no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.” 

Henceforth, a motion to amend does not have to lead to a search of all prior art known to man. Nor does the motion to amend have to discuss every prior art reference listed in the prosecution history of the underlying patent or any other Office proceeding involving that patent. While very helpful, the MasterImage 3D clarification order did not fully explain what “material” prior art is. 

A review of any issued patent reveals that scores of prior art references are cited to the Office for many reasons, including full disclosure. How many of those prior art references should be addressed as “material” in the motion to amend? Is an expert needed to address the “material” prior art in the motion to amend? Since the PTAB judges have neither the desire nor the time to function as patent examiners3 in the post-grant proceedings, and because such proceedings are “more adjudicatory than examinational,”4 it makes common sense that the “prior art” chosen by the patent owner to discuss in the motion to amend should be a small subset of the scores of references that are usually cited to the Office.

The “prior art” and technical expert issues were addressed in International Flavors & Fragrances Inc. v. The United States of America, as Represented by the Secretary of Agriculture.5 International Flavors was the very first IPR proceeding in which the PTAB allowed the patent owner to amend the claims. After the PTAB instituted trial, the only paper filed by the patent owner was a motion to amend. The motion to amend requested cancellation of claims 1–26 and substitution of proposed claims 27–45. Independent claim 27 included all of the limitations of original claim 1, but restricted the isolongifolenone analogs to only the first five compounds and mixtures thereof, culled from the Markush group in original dependent claim 8 in an effort to exclude the compound disclosed in a prior art reference to Behan. Independent claim 45 carried forward the method from original claim 1 while only restricting the method to repelling the arthropods ticks or mites. Petitioner did not file an opposition to the motion to amend. 

In a subsequent conference call between the judges and respective counsel for both parties, petitioner and patent owner confirmed that they were not filing any more motions or papers in the proceeding because they had reached a settlement in the related district court litigation. The motion to amend was granted as to proposed claims 27–44 because (1) the claims did not broaden the scope of the original claims; (2) the motion set forth in detail the written description support in the original disclosure of the patent for each claim that was added or amended; (3) the patent owner demonstrated the patentability of the proposed claims over the prior art references, and the prior art in general; (4) the patent owner provided evidence as to the level of ordinary skill in the art and evidence as to what was known regarding the features being relied upon to demonstrate the patentability of the proposed claims; and (5) the patent owner had complied with the reasoning in Idle Free, and had demonstrated by a preponderance of the evidence the patentability of proposed claims 27–44. 

In International Flavors, the patent owner supported the motion to amend with several publications, as well as a declaration by Dr. Aijun Zhang, as evidence to show the level of ordinary skill in the art, as well as to show the unobviousness of narrower claims 27–44. What is especially noteworthy about this case is the four-page length of the Zhang declaration (Exhibit 2005). Although scores of prior art references were cited during the prosecution history of the underlying patent in International Flavors, declarant did not specifically mention them. Presumably, the motion to amend and the supporting declaration only discussed what was deemed “material” and the “closest” prior art known to the patent owner. One possible explanation for the granting of the motion to amend could be that the petitioner did not oppose the patent owner’s motion to amend.

Turning lastly to the assumption that an expert is needed to buttress a motion to amend, the PTAB stated in Idle Free that “[a] showing of patentable significance can rely on declaration testimony of a technical expert about the significance and usefulness of the feature(s) added by the proposed substitute claim.”6 Notwithstanding the guidance in Idle Free, the PTAB noted in Riverbed Technology, Inc. v. Silver Peak Systems, Inc.7 that “Petitioner argues that Patent Owner failed to provide a declaration from a technical expert in support of its arguments regarding patentability, and did not provide evidence as to ‘what it believes would constitute the level of ‘ordinary’ skill in the art,’ including ‘some indication of education, training, and/or work experience.”8 

In response, the PTAB stated that “[t]estimony from a technical expert can be helpful to show what would have been known to a person of ordinary skill in the art and explain the significance of features added in a proposed substitute claim.9 It is not a prerequisite for a motion to amend, however, just as it is not a prerequisite for a petition seeking inter partes review. Every case is different and will depend on its own facts.” During oral hearing, petitioner acknowledged that a technical expert was not required. Thus, based upon the facts in the case, the PTAB determined that patent owner had provided a sufficient explanation of why proposed substitute claims 28 and 30 were patentable over the prior art, without reliance on testimony from a technical expert.

Although a patent owner is not required to use a technical expert to support a motion to amend, it is recommended that one be used to buttress the positions set forth in the motion to amend. If a technical expert is used to support the motion to amend, the expert testimony as well as the motion to amend should focus on the “material” prior art that is “closest” to the additional limitations in the proposed claims.

—Written by Kenneth W. Hairston

1See IPR2012-00027 (PTAB June 11, 2013) (Paper 26) (informative).
2See IPR2015-00040 (PTAB July 15, 2015) (Paper 42). 
3In ex parte cases, the PTAB judges still have the power to institute new grounds of rejection.
4See Idle Free at page 6.
5See IPR2013-00124 (PTAB May 20, 2014) (Paper 12).
6See Idle Free at page 7.
7See IPR2013-00403 (PTAB December 30, 2014) (Paper 33).
8Opp. 7–8
9See Idle Free at 7-8.


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