By Matthew L. Cutler, Principal
The tide of inter partes review proceedings continues to batter Patent Owners, as the PTAB issued four decisions in cases brought by Intellectual Ventures against Xilinx, rendering all challenged claims at issue unpatentable. Intellectual Ventures Management, LLC v. Xilinx, Inc., IPR2012-00018, -00019, -00020, and -00023.
The first two decisions, each authored by Judge Arbes, were similar in their content, and revealed two interesting takeaway issues. IPR2012-00018, -00019. First, in its decision to initiate, the Board construed the term “array of landing pads disposed on an inside surface of the integrated circuit package.” As the trial progressed from that decision, however, it became clear that what was an “inside surface” needed further elucidation. As such, the Board undertook further claim construction analysis in the Final Written Decision, rejecting Patent Owner’s contention that “inside surface” required that the ICP completely surrounded the pads. Instead, and referencing a figure created by Petitioner, and included in its Reply brief, the Board found that a pad could be located on an inside surface and not be completely surrounded by the ICP. Id at 9-18. The second significant issue related to Patent Owner’s Motion to Amend. The Board denied that motion because: 1) there was insufficient testimony or evidence that the new references cited by Petitioner, in combination, would work as Patent Owner suggested (at 40); 2) there was insufficient evidence that the new combination would not have been obvious (at 41); and 3) Patent Owner failed to provide at least some explanation as to why one of skill would not have found the combination obvious (at 42). As such, all claims were deemed unpatentable, and no amended claims were entered.
The third decision (IPR2012-00020), authored by Judge Medley, was interesting in its discussion of the parties experts. While both parties submitted expert testimony, in this battle of experts, Petitioner was more persuasive because Patent Owner’s expert only expressed conclusory opinions (at 10). Relatedly, the Board noted that Patent Owner did not depose Petitioner’s expert or otherwise challenge his testimony in key regards (at 13). In the end, giving substantial weight to Petitioner’s expert, and less weight to Patent Owner’s expert, resulted in a finding that all challenged claims were unpatentable.
In the fourth decision (IPR2012-00023), authored by Judge Easthom, the Board addressed the issue of whether an expert declaration can fill in holes in a prima facie case of obviousness. In that case, Patent Owner argued that the art was silent on a key limitation of the claims (a double poly layer) and that Petitioner had attempted to fill that hole in the art only via expert testimony. The Board did not sustain this argument, however, finding that 35 U.S.C. § 312(a)(3)(B) allows for expert testimony in support of a Petition. Referencing the Federal Circuit’s KSR decision, the Board made clear that declaration testimony about common sense and general knowledge in the art was appropriate in IPR proceedings. In general, therefore, until further notice, expert testimony may be used to supply missing claim limitations not shown in a printed publication or patent. Id. at 36-40.