The petitioner challenged claims of a patent whose parent had been challenged previously in an IPR by a third party. In that earlier proceeding, the board found that all of the parent patent’s claims were unpatentable for obviousness, despite the patent owner’s attempt to show nonobviousness by submitting evidence of objective indicia.
In the IPR challenging the claims of the child patent, the patent owner argued in its preliminary response that the petitioner should have addressed objective indicia evidence that was present in the specification. The board’s institution decision “did not expressly address” that argument. Following institution, the patent owner sought rehearing, arguing in part that the board had erred by overlooking the objective indicia evidence, and that the petition was “facially deficient” because it did not address the evidence present in the specification and original prosecution history.
The board rejected the patent owner’s contention that the board had erred. First, the board explained that the child patent did “not have an extensive litigation record of objective indicia supporting nonobviousness” and so case law requiring a petitioner to address such evidence was inapposite. Rather, in the IPR proceeding challenging the parent patent, the board had found that patent owner’s objective indicia evidence did not establish nonobviousness. Second, the board explained that the objective indicia evidence concerned a limitation that was not present in the challenged claims. As such, for either of those reasons, the petitioner did not have to address the evidence in the petition. The board further explained that to the extent the patent owner had submitted additional evidence on this issue, the petitioner had not yet had an opportunity to respond, and so the record could be developed during trial.
The board completed its analysis by turning to the merits of the patent owner’s evidence at the institution stage. The board found that the patent owner had made only “generalized arguments” and had not presented “sufficient factual evidence” to establish its allegations of unexpected results in support of nonobviousness. In conclusion, the board denied the request for rehearing for failing to show the board had abused its discretion in instituting the IPR.
Practice Tip: Both sides in America Invents Act (AIA) proceedings should carefully consider whether evidence of objective indicia that is relevant to the challenged claims has been fully developed in prior proceedings, such as during prosecution, reexamination, an AIA trial, an International Trade Commission (ITC) investigation or a district court litigation. A petitioner may need to address objective evidence of nonobviousness or risk denial of institution if the patent owner successfully argues that the evidence ought to have been addressed in the petition. Conversely, in the absence of a fully developed record of objective indicia evidence, a petitioner may not be obliged to address that evidence, and a patent owner may be better served by attacking the petition in other ways.
Liquidia Techs., Inc. v. United Therapeutics Corp., IPR2020-00770, Paper 14 (PTAB Mar. 1, 2021)