By Matthew L. Cutler, Principal
In two separate challenges of a single patent, Dell had lukewarm success with 23 claims being placed in an inter partes review trial, but three claims and multiple grounds also denied by the Board in Dell, Inc. v. Acceleron, LLC (IPR2013-00440 and IPR2013-00443), involving U.S. Pat. No. 6,948,021.
The ‘021 patent relates to a computer network device having components of CPU modules, a power module, and an Ethernet switch module which incorporates “hot-swappable” connectors. The hot-swappable connectors allow for more efficient and speedy repair of the device.
The first issue of interest in the Board’s decision came as part of the claim construction for “is a stand-alone computer.” Petitioner sought to broaden the scope of that term, based on a claim differentiation argument, but the Board found no reason to deviate from the plain and ordinary meaning of the term. ’440 Order at 6.
Also of interest was Petitioner’s inherency argument relating to the limitation of claim 24 that required a limitation relating to filtering communications to limit collisions caused by communications traffic. Petitioner argued that such filtering was inherent to Ethernet switches, and supplied a declaration that “simply reiterates this position.” ’440 Order at 12. But the Board was not persuaded by this inherency argument. The patent at issue teaches that ethernet switch modules perform the claimed filtering, not simply a switch. Because Petitioner did not allege that a switch was the same as a switch module, the Petition failed to set forth a reasonable likelihood of anticipation of claim 24.
Of brief note from the Board’s obviousness analysis, in what is a growing trend, the Board made special mention of the fact that Petitioner articulated a reason for combining the references underlying its obviousness contentions. That is, not only did Petitioner demonstrate that the combination met all limitations, it also “articulated a sufficient reason with a rational underpinning for combining the teachings…” ’440 Order at 15.
In sum, in the ’440 proceeding, the Board found that 23 of the 26 challenged claims should be placed into an IPR trial.
Turning to the ’443 proceeding, Patent Owner’s most critical arguments centered on the priority date for certain claims of the ’021 patent. To that end, Petitioner argued that certain claims were not entitled to the filing date of a related provisional application. ’443 Order at 7. In its Preliminary Response, Patent Owner set forth the support from the provisional application for the challenged claims and the Board agreed – finding that the claims were properly supported and were, therefore, entitled to the provisional application filing date.
This finding had a ripple effect on the prior art relied upon by Petitioner. For example, the Board then turned to a prior art reference, that similarly claimed priority to provisional applications. Patent Owner argued that the reference was not entitled to the priority date of the provisional applications because the excerpts relied upon by Petitioner were not found in the provisional applications. The Board agreed, finding it important that neither Petitioner, nor its expert, cited to the provisional applications. Further, Petitioner did not even provide copies of the applications as exhibits. ’443 Order at 10.
In the end, Dell’s efforts resulted in a mixed bag – partial success in having 23 of 26 challenged claims entered into an IPR trial based on one petition, but all challenges rejected in the second petition.
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