The PTAB recently issued a final written decision on remand from the Federal Circuit, holding all claims to be unpatentable in Athena Automation Ltd., v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 61 (P.T.A.B. Apr. 28, 2017). This decision reversed the PTAB’s original decision that certain claims were not anticipated by a reference that referred to disclosures from another document.
The PTAB originally held that Athena did not meet its burden to show that some claims were anticipated by a prior art patent (“Glaesener”) that referred to portions of another patent (“Choi”). Specifically, the PTAB determined that Glaesener, regardless of whether or not it incorporated Choi by reference, did not disclose all claim elements and thus, did not anticipate the claims. On appeal, the Federal Circuit vacated the PTAB’s finding of no anticipation, holding that Glaesener incorporates “at least some portions of Choi” by reference.
The relevant incorporation language of Glaesener states, “[t]he tie-bar nuts can be secured to the rear wall 16 by any appropriate mechanism, such as the pineapple and toothed-ring mechanism described in Choi.” In its original decision, the PTAB determined that Choi does not use the term “pineapple and toothed-ring mechanism.” Additionally, the PTAB found that Athena did not provide evidence as to what part of Choi Glaesener referenced. The Federal Circuit found that a reasonably skilled artisan would understand Glaesener’s use of the term “pineapple and toothed-ring” refers to the locking mechanism described in Choi because “Choi explicitly identifies toothed components when discussing its securing/clamping assemblies, i.e., its [only] locking mechanism.” The Federal Circuit held that Glaesener incorporates Choi for the purpose of anticipation, noting that it does not matter whether Glaesener’s statement works to incorporate the rest of Choi.
On remand, the PTAB held that Athena met its burden to show that Glaesener and its referenced Choi disclosure anticipated various claims. Husky argued that the Federal Circuit opinion limits the components of Choi that can be incorporated to specific components selected from the opinion. But the PTAB relied on “all portions of Choi that a skilled artisan would understand describe how to use the disclosed [locking mechanism].” Further, the PTAB declined to alter its original claim construction and found that Glaesener/Choi discloses each limitation of the claims at issue.
This decision is the fourth IPR decision on remand where the PTAB has reversed its initial patentability determination and the first time such a reversal has been in favor of the Petitioner. However, this decision is in line with the trend that the PTAB is likely to reverse its initial determination when the Federal Circuit reverses a key component of the original final written decision. See Kerry S. Taylor & Clayton Henson, IPR Appeals: Outcomes in Fed. Circ. Remands to PTAB, (Feb. 7, 2017), https://www.law360.com/articles/884927/ipr-appeals-outcomes-in-fed-circ-remands-to-ptab.