Takeaway: Petitioner cannot rely on the Board’s Decision on Institution to persuade the Board that the cited art is analogous; rather, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence.

In its Final Written Decision, the Board held that Petitioner had not shown by a preponderance of the evidence that claims 1-12 of the ’748 patent are unpatentable. The Board instituted inter partes review based on the following challenges to claims 1–12 under 35 U.S.C. § 103(a): (1) claims 1-3, 5, and 10-12 were alleged as obvious over Spirov, Bathiche, and Shkolnikov; (2) claims 4, 8, and 9 were as alleged obvious over Spirov, Bathiche, Shkolnikov, and Fouche; and (3) claims 6 and 7 were alleged as obvious over Spirov, Bathiche, Shkolnikov, and Barr.

Regarding Petitioner’s obviousness challenge of claims 1-3, 5, and 10-12, Patent Owner argued that neither Bathiche nor Shkolnikov is analogous art. The Board stated that whether prior art is analogous is based on: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Patent Owner argued that Shkolnikov is directed toward an active keyboard system for hand-held electronic devices. According to Patent Owner, this is not in the same field of endeavor nor reasonably pertinent to the problem faced by the ’748 patent. Patent Owner argued that the ’748 patent is concerned with providing easier control of remotely controlled “flying things.”

Petitioner countered that the Board determined in its Institution Decision that claims 1-3, 5, and 10-12 are obvious over Smith in view of Spirov, Bathiche, and Shkolnikov. The Board stated that Petitioner is incorrect because all that was determined is that the Petition had demonstrated a reasonable likelihood of Petitioner prevailing on certain asserted grounds of obviousness. Petitioner next alleged that Patent Owner’s arguments were identical to those in the Preliminary Response. The Board again stated this is incorrect. In its Institution Decision, the Board disagreed that the Petition’s characterization of the level of ordinary skill in the art defined the field of endeavor and that the particular problem that the ’748 patent is concerned with is control of remotely controlled vehicles.

Thus, Petitioner’s reliance upon the Board’s Decision on Institution as a basis to assert that Patent Owner’s arguments concerning whether Shkolnikov is analogous art is incorrect. The Board stated that Petitioner had not met its burden in showing that Shkolnikov is analogous art. Petitioner’s alleged grounds for unpatentability in the instant proceeding are not grounds entered by the Board as permitted, for example, in reexamination proceedings. The Board determined that Shkolnikov is critical to Petitioner’s grounds of unpatentability. Thus, the Board determined that Petitioner had not demonstrated by a preponderance of the evidence that claims 1-12 are unpatentable.

The Board did not provide detailed analysis regarding Bathiche. Instead, the Board stated that it had determined that Bathiche was reasonably pertinent to the problem with which the inventor was involved and, thus, analogous art. The Board also dismissed Patent Owner’s motion to exclude as moot.

PARROT S.A. and PARROT, INC. v. DRONE TECHNOLOGIES, INC., IPR2014-00732

Paper 29: Final Written Decision

Dated: October 20, 2015

Patent 8,106,748

Before: Howard B. Blankenship, Matthew R. Clements, and Christopher M. Kaiser Written by: Blankenship Related Proceedings: Drone Technologies, Inc. v. Parrot S.A., No. 2:05-mc-02025 (W.D. Pa.).