Eight PTAB Decisions in Two Days Result In Cancellation of Challenged Patent Claims

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By Tony Dutra

Feb. 11 --The Patent Trial and Appeal Board issued eight more written decisions on Feb. 10 and 11, each resulting in cancellation of challenged patent claims.

The decisions follow judgments on seven other petitions--two inter partes reviews (221 PTD, 11/15/13) and (11 PTD, 1/16/14) and five covered business method challenges (114 PTD, 6/13/13); (16 PTD, 1/24/14); (18 PTD, 1/28/14); and (23 PTD, 2/4/14)--that were decided on the merits.

To date, the PTAB has not ruled in favor of any challenged patent owner.

The timing of PTAB decisions now appears predictable. Trial was instituted on Feb. 12, 2013, in each of the recent eight cases, so the opinions beat the statutory one-year deadline--under 35 U.S.C. §316(a)(11) for IPRs and 35 U.S.C. §326(a)(11) for CBMs--by only one or two days.

IVM v. Xilinx

On Feb. 10, the board ruled on four IPR petitions filed by Intellectual Ventures Management LLC (Intellectual Ventures Mgmt., LLC v. Xilinx, Inc., P.T.A.B., No. IPR2012-00018, 2/10/14, and Intellectual Ventures Mgmt., LLC v. Xilinx, Inc., P.T.A.B., No. IPR2012-00019, 2/10/14), with two more coming a day later (Intellectual Ventures Mgmt., LLC v. Xilinx, Inc., P.T.A.B., No. IPR2012-00020, 2/11/14, and Intellectual Ventures Mgmt., LLC v. Xilinx, Inc., P.T.A.B., No. IPR2012-00023, 2/11/14).

These cases are unusual in that IVM is the well known patent assertion entity, but here it was on the attack against another patent holder. Xilinx Inc. filed a declaratory action in 2011 against IVM in the U.S. District Court for the Northern District of California, No. 5:11-cv-04407, and IVM apparently responded by challenging at the PTAB integrated circuit patents assigned to Xilinx (U.S. Patent No. 7,566,960; 7,994,609; 8,058,897 and 8,062,968).

The PTAB determined that all challenged claims of all four patents were invalid for obviousness. Xilinx attempted to amend many of the claims during the proceedings and in general, the board ruled either that amendment was improper or the amended claims were also unpatentable. Only unchallenged claims 10 and 11 of the '897 patent survive.

Administrative Patent Judge Justin T. Arbes wrote the board's Feb. 10 opinions and APJ Karl D. Easthom wrote the Feb. 11 opinions. APJ Sally C. Medley joined all four.

Michael D. Specht and Lori A. Gordon of Sterne, Kessler, Goldstein& Fox PLLC, Washington, D.C., represented IVM. David L. McCombs and David M. O'Dell of Haynes and Boone LLP, Dallas, represented Xilinx.

Meanwhile, Xilinx has succeed so far with two IPR petitions of its own--IPR2013-00029 (trial instituted March 12, 2013) and IPR2013-00112 (trial instituted June 27, 2013)--against an IVM patent (5,632,545) on a color video projector system. McCombs represents Xilinx in those cases, with George E. Quillin of Foley & Lardner LLP, Washington, D.C., representing IVM.

Liberty Mutual v. Progressive

Potentially relevant to Xilinx's challenges, Liberty Mutual Insurance Co. showed the benefit of attacking the same patent in different petitions, on the basis of different prior art.

On Feb. 11, the board published two opinions supporting, on different grounds, cancellation of certain claims of a patent (U.S. Patent No. 8,140,358) owned by Progressive Casualty Insurance Co. (Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., P.T.A.B., No. CBM2012-00003, 2/11/14, and Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., P.T.A.B., No. CBM2013-00009, 2/11/14).

The patented invention gathers “operational characteristics and operator actions” of a vehicle so as to better calculate the cost of motor vehicle insurance than a system that relies on the car owner's accident history and demographics.

The board in CBM2012-00003 agreed with Liberty Mutual's arguments that claims 2-18 of the '358 patent are unpatentable, but not additionally challenged claims 1, 19 and 20. Liberty's obviousness arguments relied on a “Nakagawa” U.S. patent application disclosing a similar invention, combined with one of seven other references to fill in the gaps. Progessive showed, though, that claims 1, 19 and 20 were entitled to an earlier priority date than Nakagawa.

But Liberty Mutual subsequently filed CBM2012-00009 against the same patent using a Geostar Corp.'s “RDSS” publication from 1989 as the base reference, combining it with one of six of the same references cited in CBM2012-00003. And the board determined that claims 1, 19 and 20 were obvious over the RDSS reference combined with a reference common to both challenges.

The patent is one of six Progressive asserted in Progressive Cas. Ins. Co. v. Safeco Ins. Co. of Ill., No. 1:10-cv-01370 (N.D. Ohio), and then challenged by Liberty Mutual at the board. The PTAB knocked out another of those patents in two other CBM opinions on Jan. 27. The other four patents are challenged in four other CBM proceedings, with PTAB opinions on two of the patents expected soon.

APJ Jameson Lee wrote the opinions, joined by APJs Joni Y. Chang and Michael R. Zecher.

J. Steven Baughman of Ropes & Gray, Boston, represented Liberty Mutual. Calvin P. Griffith of Jones Day, Cleveland, represented Progressive.

Nichia v. Emcore

Emcore Inc.'s semiconductor patent (U.S. Patent No. 6,653,215) was the subject of an IPR challenge by Nichia Corp., asserted by Emcore in No. 2:12-cv-11758 (E.D. Mich.). The board ruled that all 17 claims of the patent were obvious over an extensive combination of prior art resources (Nichia Corp. v. Emcore Corp., P.T.A.B., No. IPR2012-00005, 2/11/14).

The case also features a decision that the PTAB identified as “representative,” an “Order regarding Written Description Support for Substituted Claims,” Paper 27, June 3, 2013. In the instant opinion, the board denied Emcore's motion to amend its claims with a complete replacement, because “[n]one of the proposed new claims are traceable to any challenged claims.”

APJ Joni Y. Chang wrote the board's opinion, joined by APJs Kevin F. Turner and Stephen C. Siu.

Matthew A. Smith of Turner Boyd LLP, Redwood City, Calif., represented Nichia. Michael A. Tomasulo of Winston & Strawn LLP, Los Angeles, represented Emcore.

Motorola Mobility v. Arnouse

Motorola Mobility LLC successfully challenged a patent (U.S. Patent No. 7,516,484) on a “reader” providing an interface between a small device such as a mobile phone and a portable computer (Motorola Mobility LLC v. Arnouse Digital Devices Corp., P.T.A.B., No. IPR2013-00010, 2/11/14).

The patent is asserted by inventor Michael Arnouse in Arnouse Digital Devices Corp. v. Motorola Mobility Inc., No. 5:11-cv-00155-cr (D. Vt.). Motorola challenged seven of the patent's 20 claims in the PTAB administrative proceeding.

While each of the above seven opinions found claims unpatentable for obviousness, the board here determined that the claims were anticipated by another patent (5,436,857) issued in 1995, 13 years before Arnouse's priority date.

APJ Chang filed the board's opinion here, joined by APJs Michael P. Tierney and William V. Saindon.

Ko-Fang Chang of Kilpatrick Townsend & Stockton LLP, represented Motorola. Justin W. McCabe of Dunkiel Saunders Elliott Raubvogel & Hand PLLC, Burlington, Vt., represented Arnouse.

IVM opinions are available at http://pub.bna.com/ptcj/IPR2012-00018final.pdf, http://pub.bna.com/ptcj/IPR2012-00019final.pdf, http://pub.bna.com/ptcj/IPR2012-00020final.pdf, http://pub.bna.com/ptcj/IPR2012-00023final.pdf.

Liberty Mutual opinions are available at http://pub.bna.com/ptcj/CBM2012-00003final.pdf and http://pub.bna.com/ptcj/CBM2012-00009final.pdf.

Nichia opinion is available at http://pub.bna.com/ptcj/IPR2012-00005final.pdf.

Motorola opinion is available at http://pub.bna.com/ptcj/IPR2013-00010final.pdf.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

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