Patent Trial and Appeal Board (PTAB) panel has concluded that all challenged claims of an internet application patent are invalid because they are obvious in view of the prior art. In its petition for inter partes review (IPR), the petitioner contended that the earliest possible priority date for each of the challenged claims is the actual filing date of the application that matured into the patent. In response, the patent owner argued that the petition exceeded the permissible scope of inter partes review because petitioner’s challenge “raises issues related to a purported failure of the written description requirement, which is in the realm of 35 U.S.C. § 112(a) and not a prior art challenge under Section 102 or Section 103.” The panel rejected the patent owner’s argument and, in doing so, clarified the difference between compliance with the requirements of 35 U.S.C. § 112 and assessing the earliest priority date for a claim. The panel explained that the petitioner “does not assert that [the owner] never had possession of the claimed features. Petitioner argues only that there is no description of these features until the application filed on November 30, 2009. A review of the disclosure for purposes of identifying the priority date for the claimed subject matter is appropriate and within the scope of inter partes review.” Because the patent owner did not offer any other substantive response to the challenges upon which the trial was instituted, the panel concluded that the claims are unpatentable.

SAP America, Inc., v. Lakshmi Arunachalam, IPR2014-00414 (PTAB August 17, 2015)
[Easthom, Saindon, McNamara (opinion)].