An inter partes review (IPR) provides an opportunity to challenge the patentability of one or more claims of a patent under 35 U.S.C. § 102 (anticipation) and § 103 (obviousness) in a trial proceeding before the United States Patent Trial and Appeal Board (PTAB). When challenging a patent, it is important for a petitioner to include obviousness arguments to improve the likelihood that the Board institutes a full review and invalidates the claims, and that the Federal Circuit upholds the invalidity in case of appeal.
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., the Federal Circuit reversed a PTAB ruling that claim 21 of U.S. Patent No. 7,208,895 was invalid. 851 F.3d 1270 (Fed. Cir. 2017). The appeal in Nidec arose from an IPR in which Zhongshan presented only § 102 arguments in its petition. The PTAB had instituted the IPR and—in agreeing with the petitioner’s claim construction—found claim 21 to be anticipated by a single reference.
However, the Federal Circuit found the PTAB’s analysis was based on a misapplication of Kennametal v. Ingersoll Cutting Tool Co. and thus improperly assumed disclosure of a claim element. 780 F.3d 1376 (Fed. Cir. 2015). Kennametal addressed the issue of whether the disclosure of a limited number of possible combinations discloses one of the combinations, i.e. if a reference teaches that any of 5 binding agents (one being ruthenium) could be used with any of 3 coating techniques (one being PVD), it discloses the specific combination of the ruthenium and PVD. Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would “at once envisage” the missing limitation. Nidec, 851 F.3d at 1274 (citing Kennametal, 780 F.3d at 1381). The Federal Circuit explained that the PTAB misapplied Kennametal “to fill in missing limitations simply because a skilled artisan would immediately envision them.” Nidec, 851 F.3d at 1274–75.
Nevertheless, the Federal Circuit’s remarks indicate that had the single reference been used alone or in combination with one or more references in an obviousness argument, the outcome may have been different. If it is true that the only missing limitation in the reference would have been immediately envisioned by one of skill in the art, then the claim is obvious over this reference. However, obviousness was not argued in the IPR petition, and was thus not at issue on appeal. Therefore, the court had no choice but to reverse the PTAB’s decision regarding anticipation and find that the claim was valid.
When pursuing an IPR, a petitioner should consider any shortcomings in its anticipation arguments and fill those gaps as needed with obviousness arguments relying on the knowledge of a person of ordinary skill in the art and/or secondary references.
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