Athena Automation Ltd. v. Husky Injection Molding Systems Ltd.  

Addressing a patent owner’s request to dismiss an inter partes review (IPR) based on assignor estoppel and motion to amend the claims, the U. S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (Board) found all petitioned claims directed to an injection molding machine patent to be unpatentable as obvious over the prior art.  Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR No. IPR2013-00167 (PTAB, July 23, 2014) (Bisk, APJ).

The patent owner, Husky Injection Molding Systems, defended the IPR on the basis that the petitioner, Athena Automation, was estopped from challenging the validity of the patent under the doctrine of assignor estoppel because one of the named inventors of the patent was the founder, president, CEO and one of two directors of petitioner, and therefore in privity with Athena.

The Board rejected Athena’s argument (essentially the same argument the Board previously rejected in a related proceeding), noting that assignor estoppel was not a basis for denying an IPR petition under § 311(a).  The statute provides that “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.”  Thus, according to the Board, an assignor of a patent who is not an owner at the time of filing may file a petition requesting IPR.

After finding the petitioned claims unpatentable as obvious under § 103, the Board rejected Husky’s contingent request to enter proposed, amended claims.  The Board explained that because there is no examination of the proposed amended claims, Husky has the burden of showing that the proposed claims are not only distinguished over the prior art applied to the original claims, but more generally, that the subject matter recited in the proposed claim is not taught or suggested by any prior art known to the patent owner.  Here, the Board concluded that Husky failed to meet its burden, only focusing on patentability over the disclosure of a single prior art reference.  Moreover, Husky failed to present evidence that it was unaware of any other prior art or that the proposed amended claims were patentable over any prior art known to it.  On the other hand, the petitioner’s declarant testified that a person of ordinary skill in the art would have found the subject matter of the proposed amended claims obvious, and Husky failed to provide any persuasive evidence to the contrary.