Alcohol Monitoring Systems, Inc. v. Soberlink, Inc.

In a decision to institute inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) determined that the petitioner was estopped from challenging several claims of the patent-in-question as a consequence of the result of a prior IPR proceeding, but had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the remaining claims. Alcohol Monitoring Systems, Inc. v. Soberlink, Inc., Case IPR2015-00556 (PTAB, July 16, 2015) (McKone, APJ).

The challenged patent relates to a remote breath testing and identification device. The device includes a breath alcohol test, a digital camera that verifies the identity of the user and a wireless transmitter that transmits the blood alcohol level and identity information to a receiver at a monitoring station. In its decision to institute, the PTAB first considered its final written decision from an earlier related IPR. In the previous IPR, the PTAB construed certain terms, and it maintained those constructions in the present proceeding. The PTAB also concluded that the petitioner should be estopped under § 315(e)(1) from challenging several claims that were addressed in the earlier IPR.

Section 315(e)(1) states that a petitioner in an inter partes review that results in a final written decision under § 318(a) “may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In the earlier IPR, the PTAB found several of the challenged patent’s claims unpatentable. The PTAB determined that the petitioner was estopped from maintaining the instant proceeding as to those claims.

The PTAB then considered the petitioner’s arguments with respect to the remaining claims. Although the previously invalidated claims themselves could not be challenged, the PTAB addressed the applicability of the prior art used to invalidate claims in the context of those claims that had not previously been challenged. After reviewing the petitioner’s arguments, the PTAB was persuaded that the petitioner met its threshold for showing that the limitations of the challenged claims were taught or suggested by the prior art and that the petitioner’s reasons for combining the prior art had a “rational underpinning.” Based on those findings, the PTAB instituted inter partes review for the newly challenged claims.