IPR obviousness determinations affirmed; preamble limiting due to reliance for antecedent basis

Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC

Docket No. 2019-1622, -1623 (IPR2017-01809, -01810)
June 25, 2020

Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the other; obviousness conclusions affirmed.

Summary: Firebug appealed Board IPR decisions finding the claims of US 8,992,038 and 9,301,574 directed to illumination systems for shoes unpatentable as obvious. The Board concluded that the preamble term “textile footware” was not limiting to the claim body describing the components and function of the illumination system. The Board also found “the disclosure of the references is not outweighed by Firebug’s evidence of secondary considerations of nonobviousness.” The FC panel reviewed the Board’s claim construction de novo as it was “based solely on evidence intrinsic to the patent” (Shire Dev., FC 2015). The FC panel also explained that “[w]hether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[]…patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim” and generally “limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim” (e.g., “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope”), but not if the “patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (Catalina Mktg., FC 2002). It concluded “that the body of the ‘038 patent recites a structurally complete invention” and the preamble is “merely an intended purpose that does not limit the claims” (e.g., “the same element-the footwear-is independently recited in the body of the claim” that “does not go on to expressly impose any further limitation on the footwear requiring use of a specific material”; supported by written description stating “textile materials…are just one possible material type”). In contrast, the ‘574 claim was found to rely “on the instance of ‘footwear’ introduced in the preamble for ‘antecedent basis’” and to be limiting on the claim body (such reliance “can evince an inventor’s intent that the preamble limit the scope of the claim”) and the Board erred its analysis of this claim. However, that error was found to be “harmless” (In re Watts, FC 2004; Getcher, FC 1997) because its ultimate conclusion of obviousness was correct (also correct regarding the ‘038 patent; e.g., “[t]he Board was within its discretion to weigh the credibility of expert testimony” (Yorkey, FC 2010)). Firebug also argued “that the Board erred by failing to consider two license agreements” and testimony regarding those licenses that “establish a nexus between Firebug’s products and the challenged claims, which the Board otherwise found lacking.” Other expert testimony was struck by the Board because the expert refused to be deposed and had little weight. But the FC panel agreed with the Board that the evidence was weak and found no error in the Board’s determination. The Board’s decisions were therefore affirmed.

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