Docket Nos. 2015-1047 (IPR2013-00106)
LOURIE, WALLACH, HUGHES
December 31, 2015 (revised Jan. 20, 2016)
Brief Summary: Board IPR decision denying Redline’s request to submit supplemental information (expert declaration regarding obviousness) affirmed because 37 CFR § 42.123(a) does not prohibit the PTAB from exercising discretion and PTO did not err in finding “no rational underpinning to combine” cited references. This opinion was revised on Jan. 20, 2016 to emphasize that “[a] petitioner in an inter partes review has the burden of proving a claim’s invalidity by a preponderance of the evidence.”
Summary: Redline appealed Board denial of its motion to submit additional information (an expert declaration regarding obviousness) and that it failed to show claims 9 and 10 of US 6,526,808 (claims 9 and 10 were re-examined twice before) relating to methods for generating smoke to test closed and potentially explosive systems for leaks would have been obvious. The opinon explained that under 37 CFR § 42.123(a), a request to submit additional information may be made within one month of the date the trial is instituted and it “must be relevant to a claim for which the trial was instituted.” Subsections (b) and (c) provide for the submission of information after the one-month deadline and that which “is not relevant to an instituted claim”, but under those sections the party must show “why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.” The FC panel found the PTO’s interpretation of these rules in this case not to be “plainly erroneous” (e.g., 42.123(a) does not prohibit the PTAB from exercising discretion; its decision was not arbitrary and capricious). Regarding obviousness, the opinion explained that the PTAB’s findings on obviousness will not be found to be “unsupported by substantial evidence simply because the Board chose one conclusion over another plausible alternative” (In re Jolley, FC 2002). While this opinion originally stated that a party must show “by clear and convincing evidence that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so” (citing Par, FC 2014), it was revised on Jan. 20, 2016 to state a party “must…demonstrate that a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so” and cited Par (FC 2014), Ariosa Diagnostics (FC, Nov. 16, 2015 (A petitioner in an inter partes review has the burden of proving a claim’s invalidity by a preponderance of the evidence. 35 U.S.C. § 316(e).)) and 35 USC § 316(e) (“In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”) The FC panel first concluded that Redline waived its arguments regarding the PTAB’s determination of the level of skill in the art because it did not “provide[ a] persuasive alternative” to that determination until this appeal. It also found the PTAB properly considered all of the cited prior art. The FC also panel concluded that while “[t]he prior art discloses various methods or generating smoke”, none were shown to be “suitable for leak testing closed systems that have volatile hydrocarbons” (e.g., PTO found “no rational underpinning to combine” cited references…“taken together, [the prior art] could not have been combined to achieve the claimed invention”). The Board decision was therefore affirmed.