PTAB Applies Director’s Guidance and Holds That Compelling Evidence of Unpatentability Precludes Fintiv Denial
by Megan R. Mahoney, Jason Weil & Rubén H. Muñoz
September 13, 202
Patent Trial and Appeal Board, Inter Partes Review, Expert Testimony
In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv discretionary denial.
The petitioner challenged several claims of a patent as obvious over a single prior art reference and supported its positions with expert testimony. In response, the patent owner declined to address the merits, instead requesting that the PTAB exercise its discretion to deny institution under 35 U.S.C. § 314(a) because of the accelerated schedule of parallel litigation pending in district court, and under 35 U.S.C. § 325(d) because the asserted prior art reference was considered during prosecution.
The PTAB addressed each challenged claim limitation and determined that the petition and supporting expert testimony sufficiently established that the prior art reference taught the limitations. For each claim limitation, the PTAB observed that the patent owner did not address the merits of petitioner’s contentions. Despite the co-pending district court litigation, the PTAB instituted review based on the petition’s presentation of compelling evidence of unpatentability. In coming to its conclusion, the PTAB relied on the USPTO’s recent interim guidance, which explains that a “compelling unpatentability challenge” alone forecloses the PTAB’s discretion to deny institution under Fintiv. The guidance defines a “compelling unpatentability challenge” as one where the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. The PTAB concluded that the standard was met and therefore could not exercise its discretion to deny institution under Fintiv. The PTAB also refused to exercise its discretion to deny institution under 35 U.S.C. § 325(d), finding that petitioner’s compelling unpatentability challenge likewise demonstrated that the patent examiner erred during prosecution in a manner material to patentability of the challenged claims.
Practice Tip: Following the USPTO’s recent interim guidance on discretionary Fintiv denials, patent owners seeking discretionary denial should address the merits of the petition and explain why the petition and any accompanying evidence fails to show that the challenged claims are unpatentable.
STMicroelectronics, Inc. v. The Trustees of Purdue Univ., IPR2022-00309, Paper 14 (PTAB Jul. 6, 2022).
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the PTAB rejected petitioners’ proposed claim construction as being contrary to plain meaning and being improperly grounded in irrelevant embodiments. The PTAB also declined to rely on statements concerning a device depicted in a video because those statements fell outside the ambit of prior art under 35 U.S.C. § 311(b). Finally, while the majority opinion declined to address the issue of whether the video itself was a printed publication, one judge found, in concurrence, that a publicly accessible video can qualify as a printed publication under the statute. More details regarding those rulings are provided below.
Petitioners challenged several claims directed to an apparatus and method for skin treatments using electrical stimulation as being obvious in view of the prior art. Petitioners and patent owner disagreed on the construction of a claim term directed to causing coagulation around each electrode. The patent owner argued that petitioners’ proposed construction improperly introduced additional limitations into the claims, which was contrary to the plain and ordinary meaning. The PTAB agreed, finding that petitioners impermissibly attempted to read structures present in inapplicable embodiments into the language of the challenged claims.
Petitioners grounded their obviousness arguments on prior art consisting of a YouTube® video that described a handheld device with microneedling capabilities (the “INTRAcel device”). However, the petitioners’ obviousness argument was predicated on screenshots from the video in conjunction with other statements made about the INTRAcel device that were not included in the video itself. The patent owner argued that such statements made outside the video should be disregarded. The PTAB agreed with the patent owner because those statements were not disclosed in the prior art and, thus, did not qualify as a “printed publication” under 35 U.S.C. § 311(b). The PTAB panel majority noted that even if the INTRAcel device itself contained all of the required claim limitations, this was not the proper analysis for the obviousness inquiry. Rather, the issue that petitioners should have addressed was whether the printed publication disclosed every limitation.
In a footnote, the majority also explained that it was unnecessary to address whether the video qualified as a printed publication, as that issue was not in dispute. One of the judges in the panel, in a concurring opinion, took up this issue. He noted that the patent owner only conceded that the video was a “publication,” rather than a printed publication—the latter of which is disseminated in a manner that is accessible to the public interested in the art prior to the critical date of the challenged patent. He also examined well-established precedent holding that text, images, and audio of a video qualified as a “printed publication.” The concurring judge further noted that the “printed publication” concept has evolved with an emphasis on accessibility to the public—not whether it is “printed” in the strictest sense of the word. Based on the foregoing rationale, the judge concluded that if the video was publicly accessible, it qualifies as a printed publication falling within the PTAB’s review.
While claims should be read in light of the specification, the majority opinion serves as a reminder that unrelated embodiments from the specification cannot be used to add limitations into those claims. Furthermore, if relying on videos of devices to support an obviousness argument, petitioners should be mindful that physical devices themselves are not prior art under 35 U.S.C. § 311(b). The relevant inquiry is whether the printed publication discloses the limitations of a challenged claim, not whether the device itself (as may be established through non-prior art evidence alone) contains the claim limitations. Finally, petitioners seeking to rely on non-patent literature as prior art should shore up evidence in the petition demonstrating public accessibility prior to the critical date.