In two different decisions denying inter partes review (IPR) petitions, the Patent Trial and Appeal Board (PTAB or Board) reiterated that inherency assertions must be premised on features that necessarily arise from the prior art reference. Alarm.com Inc. v. Vivint, Inc., Case No. IPR2015-02204, Paper No. 14 (PTAB, Mar. 31, 2016) (Boudreau, APJ); Benitec Biopharma Ltd. v. Cold Spring Harbor Lab., Case No. IPR2016-00016, Paper No. 8 (PTAB, Mar. 31, 2016) (Snedden, APJ).
In one case, Alarm.com sought IPR of Vivint’s patent for a remote equipment monitoring system with various functions carried out by a “server.” The primary reference asserted was a manual for a prior art system called Scadaware. Vivint asserted that the manual failed to disclose the claimed “server,” and disputed Alarm.com’s reliance on features divided between two separate components of the system. Alarm.com responded that it was possible to program one of the two components to carry out both functions, and that this reprogramming probably occurred in practice. The Board found this rationale to be insufficient, explaining that “it is not enough to find that a prior art device is capable of being modified to operate in a manner that would anticipate the claims.” The Board also rejected the argument that the second component of the system couldperform the functions. Treating the argument as being based on inherency, the Board explained that inherency “may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” For these reasons, the Board refused to institute IPR.
In another case, Benitec sought IPR of Cold Spring’s patent related to methods for silencing gene expression using RNA interference, without triggering an anti-viral response. The claimed method called for RNA molecules having a nucleotide length within a specific range. Benitec primarily relied on a later-filed patent that claimed priority to an earlier-filed provisional application. Anticipation turned on the question of whether the provisional application supported any claim of the later-filed patent, as required by Dynamic Drinkware (IP Update, Vol. 18, No. 10). Because the patent and its provisional application listed different ranges of nucleotide lengths, Benitec relied on a portion of the provisional listing nucleotide length as an important consideration for avoiding an anti-viral response and claimed that the permissible lengths were already “widely known” in the art. The Board treated this as an inherency argument but pointed to the lack of any expert submission by Benitec that could have shown that the claimed range would have necessarily flowed from the provisional application. The Board thus rejected the petitioner’s anticipation position, as well as a “kitchen sink” obviousness position, and denied institution.