The Patent Trial and Appeal Board (“PTAB”) has been painted as highly pro-petitioner because most post-grant petitions are instituted, and once instituted, most claims are canceled. Notably, 84% of CBM petitions and 80% of IPR petitions have been instituted. Further, in approximately 70% of IPR trials, all instituted claims were canceled, and at least some of the instituted claims were canceled in the remaining 30% of cases. However, in its recent statements and decisions, the PTAB seems to be hinting that the tide may be changing.
In a roundtable hosted by the Patent and Trademark Office on April 15, 2014, the panel appeared to be on the defensive from claims that the PTAB is a “death squad killing property rights.” The panel pointed out that on April 11, 2014, the PTAB allowed two patents to emerge from its review unscathed. See ABB Inc. v. Roy-G-Biv Corp., P.T.A.B., No. IPR2013-00062/00282 (4/11/14) and ABB Inc. v. Roy-G-Biv Corp., P.T.A.B., No. IPR2013-00074/00286 (4/11/14). The speakers pointed to these decisions as an indicator that the AIA trials are not overwhelmingly pro-petitioner. Administrative Patent Judge Scott Boalick submitted that, having emerged intact from the review, the patents are “much stronger” as a result.
Indeed, out of the 40 final decisions issued so far, the ABB IPR proceeding is the first in which the PTAB found all challenged claims patentable. In that proceeding, the PTAB affirmed every claim of two motion control software patents owned by Roy-G-Biv Corp. The PTAB held “Petitioner has not met its burden to prove by a preponderance of the evidence” that the claims are unpatentable. IPR2013-00062/00282 at p. 3.
The two patents at issue are U.S. Patent Numbers 8,073,557 and 6,516,236. The ‘236 patent and the ‘557 patent are related and cover the same technology. IPR2013-00074/00286 at pp. 3-4. The patents relate to systems that facilitate the creation of hardware-independent motion control software, particularly motion control API. ABB Inc. claimed that the patents were obvious under 35 U.S.C. §103 in view of several pieces of prior art.
The PTAB explained that “the prior art includes a number of low-level software programs for directly programming individual motion control devices, or for aiding in the development of systems containing a number of motion control devices.” But it specifically noted that the prior art “low-level programs are highly hardware-dependent” as compared to the ‘236 patent, which is “hardware-independent.” Id. at p. 4. The decision in large part came down to a battle of the experts – two presented by petitioner and one by the patent owner. The PTAB gave significant weight to the testimony of patent owner Roy-G-Biv’s expert, finding that “Petitioner does not provide sufficient evidence to rebut this testimony, and we reject Petitioner’s attempt to discredit” the expert based on its own experts’ testimony. Id. at p. 22.
Ultimately, the patents emerged unscathed and stronger than before IPR. The district court litigation between the parties involving infringement allegations of these patents, and others, proceeds, with dispositive motions due in May 2014, and trial currently scheduled to begin in September 2014. Roy-G-Biv Corp. v. ABB Inc. et al.(EDTX Case No. 6:11-cv-00622).