Takeaway: In order to establish the date of prior art based on a declarant’s testimony, one must provide additional corroborating evidence, and such testimony is given more weight if the declarant is not an interested party.
In its Decision, the Board determined that it was more likely than not that Petitioner would prevail in showing that all challenged claims (1-20) of the ’888 Patent are unpatentable, and instituted post-grant review. The ’888 Patent relates generally to genetic quality and relative market value of livestock.
The Board initially reviewed eligibility for post-grant review, stating that it only applies to patents subject to the first inventor to file provisions of the AIA, or any application for a patent that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013. Additionally, a petition for post-grant review must be filed no later than 9 months after the date of grant of the patent. Petitioner asserted that the earliest possible effective filing date of the ’888 Patent is April 13, 2013, and that the Petition was filed within 9 months of the February 25, 2014 issue date.
The Board then discussed claim construction, stating that the claims shall be given their broadest reasonable construction in light of the specification. The first term construed was “relative market value.” The Board found that the parties’ constructions were not that much different, but adopted the one that was perceived to be more broad. The Board then construed the term “sale group including cattle that are fed and harvested for beef production,” and adopted Patent Owner’s construction of “at least bovine animals fed and harvested for beef production.” The Board found that it was unnecessary to construe other claim terms at that time.
Next, the Board reviewed whether the challenged claims failed to recite statutory subject matter under 35 U.S.C. § 101. The Board stated that an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” The Supreme Court has interpreted § 101 to include the implicit exceptions of the laws of nature, natural phenomena, and abstract ideas. The Board first determines whether a claim is “directed to” a patent-ineligible abstract idea. If it is, then the Board considers the elements of the claim to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. The Board first discussed whether claims 1-20 recite an abstract idea. Petitioner stated that the independent claims are directed to the fundamental concept of “determining an animal’s relative economic value based on its genetic and physical traits.” Patent Owner stated that Petitioner generalized the claimed invention, and that the claims are directed to “systems and methods of providing an online genetic merit scorecard that include the determined relative market value of a sale group of cattle that are fed and harvested for beef production and the ranking of genetic merits of the group.” The Board began by looking to the claims of the patent as well as the specification, finding that the specification heavily supports Petitioner’s proposed fundamental concept.
The Board then examined whether claims 1-20 recite an inventive concept that transform the otherwise patent-ineligible abstract idea into patentable subject matter. The Board was persuaded by Petitioner’s arguments that the claims merely recite generic computer hardware that is used in a conventional matter, which is not enough to transform the patent-ineligible abstract idea into patentable subject matter. The Board did not agree with Patent Owner that the claims included sufficient limitations on a specific implementation of “animal valuation” that ensure that the claims do not preempt all “animal valuations” or that certain components recited in the claims are not generic, routine, or conventional. Further, the Board was not persuaded by Patent Owner’s assertion that the claims solve a practical problem in a conventional industry in a technologically advanced manner because the “technological solution” alleged in the claims amount to no more than an instruction to take the aforementioned abstract idea and apply it on a generic computer or online environment.
The Board next discussed whether claims 1-4 and 6-20 are obvious over Wang and the Angus System. The Board noted that Petitioner cited Wang for disclosing methods implemented on a computer for determining a relative economic value of animals, including cattle and for disclosing ranking and selecting animals based on a selection index. Petitioner then provided a rationale for modifying Wang to output its information on the online genetic scorecard of the Angus System. Patent Owner argued that Petitioner’s proffered qualifications of a person of ordinary skill in the art is too high and taints Petitioner’s entire Petition; however, the Board disagreed, stating that, upon institution, Patent Owner may challenge the positions and the underlying basis, but over-qualification alone is not sufficient to dismiss a Petition in its entirely.
Patent Owner also argued that the Angus System is not prior art because the evidence provided by Petitioner to show that the Angus System provided online genetic merit scorecards to consumers either fails to predate the effective date of the patent, fails to enable one of ordinary skill in the art to reconstruct the claimed limitations, or was otherwise not publically available. The Board was persuaded that Petitioner provided sufficient evidence to corroborate the declarants’ testimony under a “rule of reason” framework. The Board noted particularly that the declarants appeared to be disinterested third parties, and that Petitioner provided further exhibits to corroborate their testimony, one of which was strong evidence showing dates before the effective filing date of the patent. The Board then examined whether claim 5 is obvious over Wang, the Angus System, and Goddarrd. Petitioner relied upon Wang and the Angus System for disclosure of all of the limitations except for “use of one or more multivariate non-linear regression equations.” Patent Owner argued that Goddard is not directed to non-linear regression equations for “cattle being fed and harvested for beef production.” The Board found this argument unpersuasive because Petitioner does not rely on Goddard for that limitation and Patent Owner did not show why the non-linear equations of Goddard could not be applied to any generic data set. The Board was also not persuaded by Patent Owner’s argument that Goddard teaches away from the claimed invention.
Next, the Board reviewed whether claims 1, 3, 4, 6-9, and 11-20 are anticipated by the ASA system. The Board was not persuaded that the claims are anticipated because Petitioner did not adequately show that the ASA system included structure corresponding to the claim limitations prior to the effective filing date of the patent. The Board was not persuaded that Petitioner had provided the requisite evidence to corroborate the declarant’s statement that the format of ASA 3 was available as of August 2012, and noted that the declarant is an interested party.
Finally, the Board exercised its discretion not to institute on the ground that dependent claims 2, 5, and 10 are obvious over the ASA system, the Angus System, and Goddard.
American Simmental Association v. Leachman Cattle of Colorado, LLC, PGR2015-00003
Paper 19: Decision on Institution of Post-Grant Review
Dated: June 19, 2015
Patent 8,660,888 B2
Before: Philip J. Kauffman, Michael W. Kim, and Robert J. Weinschenk
Written by: Kim
Related Proceedings: PGW2015-00005