November 22, 2013

Board Gives No Weight to Previous Examiner and District Court Decisions that Prior Art Was Antedated

By Matthew L. Cutler, Principal

The Board continued its record of taking a fresh look at old records in placing 10 challenged claims of an Escort patent into a trial for inter partes review in a case styled as K-40 Electronics v. Escort, Inc. (IPR2013-00203), involving U.S. Pat. No. 7,999,721.

The ‘721 patent relates to a GPS-enabled radar detector. More specifically, the patent describes that the detector is “designed to process dynamically radar sources based on previously-stored geographically referenced information.”

The Board’s decision was notable for its analysis of prior art cited by Petitioner that Patent Owner had overcome in both the examination of the application that matured into the ’721 patent and in related district court litigation.

More specifically, during prosecution of the ‘721 patent, inventor submitted a Rule 131 Declaration seeking to antedate one of the prior art references. The Examiner found the declaration to be sufficient, and withdrew rejections based on that prior art. The Board, however, changed course and sided with Petitioner in deciding that the declaration that was submitted was deficient. Order at 6.

Relatedly, Patent Owner directed the Board to district court litigation in which Patent Owner successfully argued to the Board that the invention of the ’721 patent was reduced to practice before the effective date of relevant prior art. The Board was not persuaded by this information because the district court decision was not final and because the litigation did not involve Petitioner, so Petitioner was not bound by the result. Order at 14.

Relatedly, the Board also refused to deny the petition, under 35 USC § 325(d), because the same art and arguments were previously considered. As the Board has found in every other instance in which this provision has been raised, it deemed the record in the inter partes review to be different, such that the statutory option of § 325(d) was not applicable.

In short, Patent Owner’s arguments that the petition should be denied in view of the previously-considered art were denied in their entirety and, ultimately, an inter partes review trial was instituted with regard to all challenged claims.