The Patent Trial and Appeal Board (“Board”) recently reviewed the threshold necessary to institute a request for inter partes review (IPR) under 35 U.S.C. § 102. Munchkin, Inc. v. Int’l Refills Co., Ltd., IPR2016-01154 (December 12, 2016). In Munchkin, the Board determined whether IPR petitions under 35 U.S.C. § 311 can be maintained under § 102(d).
Pre AIA 35 U.S.C. § 102 includes seven subsections (a) – (g). The subsections are split into provisions directed to novelty/prior art and to loss-of-rights. The Federal Circuit has clearly delineated that subsections (a), (b), (e), and (g) are considered novelty or prior art provisions. OddzOn Prod. , Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997). These subsections relate to public knowledge, use, and inventorship for determining the patentability of a given invention. The Federal Circuit also concluded that subsections (c) and (d) relate to loss of rights of an applicant rather than to prior art. Id. Subsections (c) and (d) of § 102 relate to, respectively, abandonment and delay in filing by an applicant after filing a corresponding patent application in a foreign jurisdiction. Consequently, subsections (c) and (d) are not, by law, prior art provisions under § 102.
The board also considered the present state of the guidance related to the AIA first to invent training offered by the USPTO to the examiner corps. That training teaches that § 102(d) cannot be “the basis for a prior art rejection.” Munchkin, at 7. Accordingly, §102(d) lacks any basis in the prior art provisions of 35 U.S.C. § 102.
In Munchkin, the Petitioner requested IPR of Patent Owner’s patent directed to diaper pail refills. U.S. Patent No. 8,899,420 includes claims directed to a cassette for packing at least one disposable object, that among other elements, requires a tube of flexible materials fitted in the receptacle and within the receptacle walls. (Claim 1.) The Petitioner requested institution of IPR based on 35 U.S.C. § 102. The only grounds for unpatentability proposed by Petitioner were based under 35 U.S.C. §102(d) to Patent Owner’s prior filed foreign application.
Considering the Federal Circuit’s guidance on the § 102 provisions, the Board decided that the request by Petitioner could not be supported because the request lacked appropriate grounds for instituting the IPR. The Petition failed to establish a reasonable likelihood of Petitioner to prevail based on prior art because there was no prior art alleged against the patentability of the patent.
Petitioners should take caution when presenting arguments in IPR proceedings. The rules now clearly provide that unpatentability based on lack of novelty can be only be supported by evidence under 35 U.S.C. § 102 subsections (a), (b), (e), and (g).