Polaris Wireless, Inc. v. TruePosition, Inc.

Addressing the issues of patent priority dates (where the asserted priority document did not share an inventor with the challenged patent) and motivation to combine, the Patent Trial and Appeal Board (PTAB or Board), in a final written decision concluded that ordered the claims at issue were not entitled to the claimed priority date and were unpatentable as obvious over “intervening” prior art.  The Board explained that a patent cannot claim an earlier priority date if it does not share a common inventor with earliest application in the priority chain, and that added complexity and expense alone are not enough of a reason to show that a person of skill in the art (POSITA) would not have a motivation to combine references.  Polaris Wireless, Inc. v. TruePosition, Inc., Case No. IPR2013-00323 (PTAB., Nov. 3, 2014) (Kim, APJ).

Polaris filed an IPR petition, challenging certain claims of TruePosition’s patent relating to locating wireless devices, which can be used to locate cell phone and other wireless users in an emergency.

After construing a number of claim terms, the Board determined that the patent at issue could not claim a priority date earlier than a piece of prior art that predated the filing date of the application that matured into patent at issue. The Board explained that a patent at issue and the earliest application in the priority chain did not have a common inventor, notwithstanding that each application in the priority chain had a common inventor with the preceding application in that chain.  Analyzing 35 U.S.C. § 120 and 37 C.F.R. § 1.78(c)(1), the Board concluded that a patent and the earliest application in the priority chain must share a common inventor and that the patent at issue was not entitled to a priority date earlier than the asserted prior art.

The Board further explained that TruePosition could not claim priority to the earlier application because it had failed to meet its burden of showing how each application in the chain of continuing applications met the written-description requirement of 35 U.S.C. § 112, first paragraph. Accordingly, the Board found the claims at issue were anticipated by the “intervening” prior art.

The Board also found that claims at issue were obvious. TruePosition made multiple, arguments that a particular reference was missing an element where the challenge was based on the combination of references that did include the “missing” element. The Board also rejected TruePosition’s argument that a POSITA would have not combined the references because the combination would have caused more complexity and expense. The Board held that this did not address why the combination would not have been predictable and within the abilities of a POSITA.

Finally, the Board rejected TruePosition’s motion to exclude an expert’s declaration based on hearsay. The Board explained that TruePosition had an opportunity to cross-examine the expert, and therefore, (whether or not it availed itself of that opportunity) the declaration was not hearsay.  Although the Board also rejected TruePosition’s argument that the declaration should be excluded for bias, it noted that in any event bias would only go to the weight of the testimony, not its admissibility.