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By Tony Dutra
Aug. 11 — The most compelling aspect of the 2011-enacted America Invents Act for many in the patent community finally made its debut almost three years later. On Aug. 5, the Patent Trial and Appeal Board made publicly known for the first time the filing of a post-grant review petition.
The PGR option, dependent on the switch to a first-inventor-to-file system and limited to the nine-month “first window” after a patent is granted, was not available for a challenge to claims of any patent claiming priority to an application filed before March 16, 2013.
And it is even questionable whether the patent at issue here qualifies: The petitioner argued that the patent owner's attempt to claim priority to 2010 lacks written description support in the corresponding application.
The PTAB has been assigning case numbers sequentially, so it is likely that at least seven other PGR petitions have been filed, but with requests to withhold public disclosure.
A patent (U.S. Patent No. 8,684,420) was issued on April 1, 2014, to Cheong Choon Ng and assigned to Choon's Design LLC. It relates to “a method and device for creating a linked wearable item from elastic bands.” More specifically, it discloses “a Brunnian link formed from a closed loop doubled over itself to capture another closed loop to form a chain.”
The application date is July 26, 2013, but the inventor claimed priority, through two continuations, to a provisional application (U.S. Provisional Application No. 61/410,399) filed on Nov. 5, 2010.
“While the '420 Pat. claims priority to U.S. applications having filing dates earlier than the 3/16/13 effective date of the first-inventor-to-file (‘FITF') provisions of the AIA, for the reasons discussed below in Section IX, at least one of the claims in the '420 Pat. has an effective filing date that is on or after the 3/16/13 FITF effective date and is hence subject to the FITF provisions of the AIA,” according to the the petition filed by LaRose Industries LLC.
LaRose's argument on that point—in Section IX of the petition—turns on its written description argument, to some extent. It contends that characterizing the '420 patent claims as a continuation to pre-2013 applications is improper, because the pre-2013 applications lack written description support for those claims.
Choon's Rainbow Loom product competes with LaRose's cra-Z-loom, which is sold through Toys “R” Us.
Choon initially sued LaRose and Toys “R” Us for patent infringement in the U.S. District Court for the Eastern District of Michigan on Aug. 19, 2013, based on a patent (8,485,565) that issued from an application filed in 2011. LaRose filed an inter partes review petition against the '565 patent, IPR2014-00218, which was terminated on July 7 when Choon “expressed an intention to cancel all challenged patent claims and request entry of an adverse judgment in this proceeding.”
But prior to that, on May 23, Choon had amended its complaint in court to include the '420 patent. Judge Terrence G. Berg denied on July 29 LaRose's motion to stay the district court litigation in an order that did not mention the '420 patent.
LaRose now challenged all but claim 8 of the 16 claims of the '420 patent as unpatentable under 35 U.S.C. §§102, 103 and 112(a) and (b), for anticipation, obviousness, lack of enablement and inadequate written description, and indefiniteness, respectively.
LaRose could not have filed the Section 112 challenges under the IPR option, which is limited to prior art evidence.
PGR petitioners, in contrast, “may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim),” per 35 U.S.C. §321(b).
Ralph W. Selitto of Greenberg Traurig LLP, Florham Park, N.J., represents LaRose. John M. Siragusa and Brian S. Tobin of Carlson Gaskey & Olds P.C., Birmingham, Mich., represent Choon at the PTAB and in court, respectively.
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Text is available at http://pub.bna.com/ptcj/PGR2014-00008petition.pdf.
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