Earlier in the IPR proceeding, the PTAB had partially instituted the IPR petition and reached a final written decision that the challenged claims (directed to a mobile wireless hotspot system) were unpatentable. Patent Owner appealed, and the Federal Circuit vacated the decision, finding error in the PTAB’s analysis of prior conception. In particular, the Federal Circuit remanded the case so that the PTAB could apply a “rule of reason analysis” and consider “all pertinent evidence.” On remand, the PTAB instituted all petitioned grounds in accordance with the Supreme Court’s ruling in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).
The PTAB began its analysis by laying out the respective burdens on the parties. Petitioner bore the burden of persuasion to show that the challenged claims were unpatentable, and therefore had the burden of establishing that any cited reference constituted prior art. Yet, because Petitioner’s reference was a patent application that qualified as § 102(e) prior art on its face, the burden shifted to Patent Owner to produce evidence antedating the reference.
On the merits of Patent Owner’s attempt to antedate the reference, the PTAB first rejected Petitioner’s argument that Patent Owner had failed to provide sufficient evidence that was authenticated. Patent Owner’s evidence included electronically stored notes, photographs and test results, along with corresponding metadata. The PTAB found that the evidence was properly authenticated through the metadata and inventor testimony.
Turning to conception, the PTAB found that the totality of Patent Owner’s evidence showed that the inventors had conceived the mobile wireless hotspot system prior to the critical date of the § 102(e) reference. Patent Owner provided inventor and expert testimony regarding how the inventors were able to use then-existing hardware to function as the recited elements of the claimed hotspot system. In particular, following the Federal Circuit’s guidance, the PTAB credited corroboration evidence that was created shortly after the critical date.
Analyzing reduction to practice, the PTAB found that Patent Owner’s evidence supported actual reduction to practice prior to the critical date. That evidence included photographs of the inventors building a prototype of the mobile hotspot system, installing it in a minivan and road-testing the device. Under rule of reason analysis, the PTAB found that the photographs gave credence to the inventor testimony.
The PTAB concluded that Patent Owner had successfully antedated the reference in question and rejected all the grounds that necessarily relied on the reference. However, because Petitioner had formulated two obviousness grounds as optionally including the reference, the PTAB analyzed those grounds without the reference. On the merits of those grounds, the PTAB found that Petitioner had failed to show that the claims were unpatentable for obviousness.
Practice Tip:
When considering whether evidence is sufficient to corroborate a prior invention and reduction to practice argument, rule of reason analysis applies. The adjudicator must consider all pertinent evidence, including materials that were generated after the critical date of a putative prior art reference, and also undated documents. Authentication of an electronic document can be accomplished through metadata.
Motorola Mobility LLC v. Intellectual Ventures II LLC, IPR2014-00504, Paper 84 (PTAB March 13, 2020)