Takeaway: A patent owner bears the burden of persuasion of proving that a prior art reference is not enabled.

In its Final Written Decision, the Board determined that Petitioner had not met its burden of showing that any of the challenged claims (claims 33-36, 39-41, 44, and 45) of the ’960 Patent are unpatentable. The ’960 Patent is directed to disclosing and claiming improved edge multi-layer, thin-film, laser-line filters.

The Board began with claim construction, noting that claims terms are given their broadest reasonable interpretation. In its Decision on Institution, the Board construed “thin-film, laser-line filter” as broad enough to encompass both soft and hard coated filters, but Patent Owner argued that it should be limited to hard-coated filters. The Board began by reviewing the claim language and specification. Patent Owner argued that the term should only apply to hard-coated filters because of claim scope disavowal in the specification, and specifically that such disclaimer applies because Patent Owner used the terms “the present invention is . . . .” However, the Board noted that such language does not always lead to claim scope disavowal. The Board was not persuaded by the specification and claim language of the ’960 Patent that “thin-film, laser-line filter” should be limited to hard-coated filters.

The Board then turned to whether claim 33 is anticipated by MacLeod. Patent Owner argued that MacLeod does not anticipate on two grounds: (1) that claim 33 is limited to hard-coated filters, which was rejected by the Board’s claim construction; and (2) that MacLeod does not enable the invention of claim 33 because it assumes ideal conditions where there is no transmission loss. The parties disagreed about the amount of transmission loss that would be experienced in manufacturing a real filter using the design in MacLeod . The parties also disagreed as to which party has the burden of proof to establish whether MacLeod enables the invention, and whether there is a presumption of enablement. The Board did not find it necessary to decide whether there is a presumption of enablement because it found that Patent Owner presented evidence of non-enablement that is sufficient to rebut a presumption of enablement.

The Board noted that an IPR differs from a district court litigation because, in district court, the patent challenger is afforded discovery of the patent owner’s case before presenting it at trial. However, in an IPR, the petitioner has to present its case prior to institution. Therefore, the Board allows a petitioner to provide additional evidence of enablement in its reply in response to evidence and argument of non-enablement in the petition. The Board also held that Patent Owner bears the burden of persuasion on non-enablement.

The Board then reviewed the enablement evidence. Petitioner argued that Patent Owner exaggerates the reality of absorption loss and its effect on MacLeod. The Board noted that there is evidence that ZnS/Cryolite laser-line filters, such as those in MacLeod, were known in the prior art. However, the Board noted that Petitioner did not provide evidence that any of these filters actually achieved the performance claimed in claim 33. Therefore, the Board found that MacLeod does not enable claim 33, and, therefore, does not anticipate it.

The Board next reviewed whether the challenged claims would have been obvious over MacLeod. The Board noted that, as to claim 33, Petitioner for the first time in its Reply relied on an alternative embodiment of MacLeod as rendering claim 33 obvious, rather than anticipated. However, the Board found that the Petition does not provide a claim chart to map out the embodiment to the limitations of claim 33.

The Board again reviewed the effect of enablement of MacLeod as an obviousness reference. The Board noted that, under § 103, a reference does not need to be enabled because it qualifies as prior art for whatever is disclosed therein. The Board found that, notwithstanding whether MacLeod is enabled, it will consider MacLeod for what it teaches. The Board then reviewed whether MacLeod could have been modified to achieve the claimed invention. The Board found that Petitioner failed to present persuasive evidence or reasoning as to who a person of ordinary skill would have modified MacLeod to practice claim 33. The Board noted that Petitioner’s evidence presented with the Reply should have been submitted with the Petition, and that its expert declaration suffered from other issues as well, such as relying on data regarding the hypothetical design rather than an actual filter, that it uses post hoc hindsight reasoning, and that it is conclusory. Therefore, the Board found that claim 33 is not obvious over MacLeod, and, therefore, that the remaining claims are not obvious.

Next, the Board reviewed both parties’ motions to exclude evidence. Both parties sought to exclude the opposing expert’s testimony under FRE 702 and Daubert. The Board found that both parties’ experts appear to be well qualified in the relevant field, but that they rely on different articles of literature to bolster their positions. This is not a Daubert issue, but rather a credibility issue.

In his Dissent, Judge Ward stated that he concurs with the majority except for two aspects: (1) the failure to provide a presumption of enablement for a prior art printed publication in an IPR; and (2) the conclusion that the ultimate burden of persuasion on enablement should be placed on the patent owner. Regarding point 1, Judge Ward relied on Federal Circuit precedent (Amgen Inc. v. Hoechst Marion Rousssel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) and In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)) for finding that there is a presumption of enablement for a prior art printed publication. Regarding point 2, Judge Ward relies on Dynamic Drinkerware, LLC v. National Graphics, Inc., 2015 WL 5166366, at *2 (Fed. Cir. Sept. 4, 2015) for the proposition that the patent challenger has the ultimate burden of persuasion to prove unpatentability based on the allegedly anticipating prior art, including enablement.

Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00599

Paper 72: Final Written Decision

Dated: September 16, 2015

Patent 7,119,960 C1

Before: William A. Capp, Trenton A. Ward, and David C. McKone

Written by: Capp

Dissent-in-Part by: Ward

Related Proceeding: Semrock, Inc. v. Edmund Optics, Inc., 13-cv-06265-DGL-JWF (W.D.N.Y.)