October 20, 2014
Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent
The Board denied an interesting attackĀ from Patent Owner who suggested that Petitionerās argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partesĀ review proceedings because it is based on 35 U.S.C. § 112.Ā SAP America, Inc. v. Pi-Net International, Inc. IPR2014-00414,Ā involving US Patent No. 8,346,894; and parent patent, US Patent No. 8,037,158.
Petitioner argued that the subject matter of the challenged claims of the ā894 patent were not disclosed in the parent ā158 patent in a manner sufficient to meet the requirements of 35 USC §112, first paragraph. Order at 11. As such, per Petitioner, the ā894 claims were not entitled to the priority date of the ā158 parent patent.Ā Specifically, Patent Challenger argued that negative limitations in some of the ā894 claims were not disclosed in the ā158 parent specification.Ā Id.
Patent Ownerās Preliminary Response argued that the petition exceeded the scope of inter partes review (which allows only challenges under 35 USC §102 and §103) by including an analysis under §112 in the challenge.
The Board began its analysis by noting that there is a difference between arguing that a claim is unpatentable based on §112 inadequate written description grounds and arguing that a claim is not entitled to a given priority date based on §112 grounds.Ā Further, Patent Owner provided no arguments on the merits against Petitionerās assertions of lack of written description in the parent ā158 patent.Ā Accordingly, after dismissing inapplicable case law cited by Patent Owner because of this distinction, the Board agreed with PetitionerĀ and found that the ā894 challenged claims were not entitled to the priority date of the ā158 patent because the ā158 patent did not provide anĀ adequate written description of the challenged claims.