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In LKQ Corporation v. Clearlamp, LLC (IPR2013-00020, Paper 73), the Patent Trial and Appeal Board upheld the validity of 12 of 24 claims in U.S. Patent 7,297,364, a patent concerning a method for the refurbishing of lamp surfaces in a vehicle so as to remove surface wear and scratches. The result of this decision reinforces the strict and exacting standard of patentability in IPR proceedings, where patent claims survive at a very low rate.
The PTAB found that LKQ failed to prove that claims 11 and 15 were not patentable. Each of the claims 11 and 15 include a step of, “applying infrared radiation to the lamp surface.” As a basis for its argument of unpatenability, LKQ cited the disclosure of the ’364 patent itself and argued that a person of ordinary skill in the art would have understood that “infrared radiation” may be used in curing a replacement coat. Clearlamp disputed this characterization and submitted that the cited content referring to the MAGNI 700 was not “admitted prior art,” and therefore not proper evidence to determine whether the step of applying infrared radiation during curing is distinct over the prior art. The Board held that the cited portions of the ’364 disclosures was not an admission of prior art because LKQ failed to provide “suitable supporting evidence” in favor of construing the cited portions as admitted prior art. The Board stated, “there is no indication in the above description that the curing of the clear coat using infrared radiation was known to anyone but the inventors prior to the filing of the application that issued as the ’364 patent.” In addition, the Board noted that the alleged admitted prior art was located in the description contained in the body of the patent describing the invention, and not in the background of the patent description. Therefore, the Board held that claims 11 and 15, and the claims 16-24 dependent therefrom, were not held to be unpatentable. (Paper 73, Page 24).
This decision shows that in order to use the disclosure of a challenged patent as prior art, the petitioner must adequately demonstrate to the Board using “suitable supporting evidence” that the disclosure is indeed prior art. Some of the factors taken into consideration by the Board include, (1) whether the cited portion is in the body of the patent describing the invention, in contrast to the background section of the patent description, and (2) whether the feature or step was known to anyone other than the inventors. It is interesting to note that in the decision to institute Inter Partes Review (Paper 18, March 29, 2013), the Board denied review of a different ground of unpatentability asserted by LKQ based on alleged “admitted prior art.” The Board held in that decision that LKQ had similarly not established that the cited portions of the ’364 patent constituted admitted prior art, and denied inter partes review as to that basis.