Contributors: Akin Gump Strauss Hauer & Feld LLP
PTAB: Applicant-Admitted Prior Art Out of Bounds in IPR, If Used as Basis for Challenge
by Karina J. Moy & Rubén H. Muñoz
Apr. 29, 2022
Patent Trial and Appeal Board, Inter Partes Review, 35 U.S.C. § 311(b)
In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the specification of the challenged patent.
The petitioner challenged a patent related to a cochlear implant system with an external sound processor and a permanently integrated rechargeable power source. Ground 1 of the IPR asserted that all claims of the challenged patent were obvious based on applicant-admitted prior art (“AAPA”) in combination with a prior art patent. In particular, the petitioner cited figures that were labeled “Prior Art” and admissions in the patent specification regarding a prior art cochlear implant system and prior art behind-the-ear sound processor.
On August 19, 2020, shortly after the IPR petition was filed, the Director of the USPTO issued binding guidance on the treatment of statements by the applicant in a patent challenged in IPR. The Director considered the statutory language of 35 U.S.C. § 311(b), which authorizes IPR “only on the basis of prior art consisting of patents or printed publications.” The USPTO guidance states that admissions about prior art in the challenged patent cannot form the “basis of” an IPR challenge because a patent cannot be prior art to itself. But where an IPR challenge is properly based on one or more prior art patents or printed publications, the PTAB may consider AAPA as factual evidence of the general knowledge of a person having ordinary skill in the art (“POSA”) by, for example, supplying missing claim limitations and supporting the motivation to combine particular disclosures.
In view of this guidance—and the Federal Circuit’s endorsement in Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed. Cir. 2022)—the PTAB found that the petitioner improperly relied on AAPA as the basis of an obviousness ground of the IPR. The petitioner relied on AAPA alone to provide several structural and functional limitations of the claimed invention. The petitioner also framed AAPA as the “foundation or starting point” of the asserted ground, citing AAPA for the known cochlear implant system and using the other prior art patent to supply missing claim elements. Having found that AAPA was the basis of this asserted ground for IPR, the PTAB then concluded that it lacked jurisdiction to consider the merits of this ground. The PTAB rejected the patent owner’s argument that once IPR is instituted the PTAB must issue a final written decision on every ground raised in the petition, including those that are outside the PTAB’s statutory authority.
Turning to three other obviousness grounds that did not rely on applicant-admitted prior art, the PTAB concluded that the petitioner had proven the unpatentability of all challenged claims.
Practice Tip: A petitioner should exercise caution when relying on admissions about the prior art drawn from a patent specification to challenge that patent. If these applicant admissions are needed to support an obviousness challenge in an IPR, the petitioner should base its challenge on a prior art patent or publication and use AAPA to supply a factual foundation as to what a POSA would have known at the time of the invention, for pre-AIA patents, or at the effective filing date of the invention, for post-AIA patents.
MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics AG, IPR2020-01016, Paper 42, IPR2021-00044, Paper 40 (PTAB Mar. 31, 2022)
Industry Praise of Consumer Hair Product Sufficient to Rebut Bald Obviousness Allegations
by Matthew George Hartman, Rubén H. Muñoz, Megan Mahoney (Law Clerk, not admitted to practice)
Apr. 29, 2022
Patent Trial and Appeal Board, Inter Partes Review, 35 U.S.C. § 103
In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the PTAB found the patent owner’s evidence of industry praise and acceptance sufficiently persuasive to conclusively decide the obviousness issue.
The patent at issue discloses a brush-like hair straightener that uses protruding heating elements and spacers to quickly straighten hair without burning the user’s scalp. The petitioner challenged all claims as obvious over several combinations of prior art. In response, the patent owner proffered objective evidence of nonobviousness, including evidence of long-felt but unmet need, failure of others, skepticism, industry praise and acceptance, copying, and commercial success.
As an initial matter, the PTAB agreed with the petitioner that a person of ordinary skill in the art would have modified one prior art reference and combined it with the teachings of a second prior art reference to create the claimed invention. However, after evaluating the secondary considerations, the PTAB concluded that the evidence of industry praise and acceptance, on its own, was sufficiently compelling to render all claims nonobvious.
For secondary considerations, the patent owner pointed to one of its products—the DAFNI brush—as evidence of nonobviousness. The patent owner argued that the DAFNI brush is entitled to a presumption of nexus with the claimed invention because it meets all limitations of the claimed invention, and is therefore coextensive with the invention. Further, the patent owner argued that industry praise and acceptance of the DAFNI brush is a direct result of the unique characteristics of the claimed invention, namely the plurality of elongate heating elements and elongate insulating spacers that allow users to quickly straighten hair without burning the skin. As support for these assertions, the patent owner submitted several articles from popular magazines in which the DAFNI brush was praised for its ability to quickly and effectively straighten hair while protecting a user’s scalp, testimony that the enhanced speed and safety are due to the claim elements, numerous accolades and recognition from popular home and beauty magazines, and use of the DAFNI brush by professional hairstylists, celebrities, and prominent beauty influencers.
The petitioner responded that the DAFNI brush could not be coextensive with the independent claim because the product contained additional unclaimed features. The petitioner further argued that the industry praise and acceptance did not result from the claimed features, but instead is attributable to the unclaimed features, prior art features, aesthetics, marketing, and brand name. However, the petitioner did not provide evidence to support the argument that the DAFNI brush’s success was due to unclaimed features or other extraneous factors.
Ultimately, the PTAB determined that the patent owner had demonstrated a nexus between the DAFNI brush and the claimed invention by showing that the evidence of secondary considerations directly resulted from the unique characteristics of the claimed invention. The PTAB therefore found the patent owner’s considerable and largely unrebutted evidence of industry praise and acceptance to be compelling evidence of nonobviousness. As such, the PTAB concluded that given the compelling evidence of secondary considerations, the tenuous prior art combinations were not sufficient to render any of the challenged claims obvious.
Practice Tip: When supporting or challenging obviousness grounds, it is important not to neglect evidence of secondary considerations. In particular, where the claimed invention includes a popular consumer product, industry praise and acceptance that directly results from the claimed features may be sufficient to overcome an obviousness challenge. Any party attempting to address secondary considerations, however, must point to actual evidence and avoid unsupported assertions.
Ontel Prods. Corp. v. Guy A. Shaked Invs. Ltd., IPR2021-00052, Paper 38 (PTAB Apr. 18, 2022)