First PGR Petition Argues Patent is FITF Based on 112 Deficiency
Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is directed to a craft kit for making linked bracelets out of colored elastic bands.The '420 patent, as well as related patents are asserted against the petitioner (LaRose Industries) as well as Toys-R-Us.
As a reminder a PGR petition may only be pursued for First Inventor to File (FITF) (i.e., those filed as applications on or after March 16, 2013). The continuation application underlying the '420 patent claims priority to earlier continuations and a provisional application that were filed before March, 16, 2013. So, in order to pursue PGR of the '420 patent, the petitioner urges that the recently issued claims are not entitled to the priority of the earlier filings for lack of written support. The petitioner does not point to a claim element per se that it urges is unsupported, but instead, to an interpretation of the claim as lacking support. (petition here)
This argument may be an especially challenging sell given the proposed construction is arguably narrower than the Broadest Reaonable Intrepetation (BRI) that will be applied by the PTAB.
As background, the petitioner explains that the previously asserted claims of this patent family required an intervening element (i.e., a pin bar). That is, the claims recited pins mounted on the pin bar, which is in turn mounted to the base or —pins/bar/base. Since none of the defendants employed such a pin bar, the claims of the '420 patent were crafted to omit that element, now —pins/base. Specifically, the newly isued claims of the '420 patent recite pins that are "supported on the base" without an intervening pin bar element. The '420 patent was recently added to the ongoing litigation by amended complaint.
The plain language of "supported on" would seem to broadly encompass both direct support (i.e., pins directly connected to the base), and indirect support (i.e., intervening elements between the pins and base, such as the pin bar). Yet, the petitioner urges the PTAB construe "supported on" as supported in contact with a surface of the base — a direct connection (which it claims is not supported by the specification of the priority filings, hence PGR is proper). The petitioner heavily relies on the petitioner's alleged litigation motivations and the removal of the pin bar from the claims to justify their direct connection read.
As acknowledged by the petitioner, the problem with this construction is that it excludes the pin bar (i.e., indirect connection) of the specification. The petitioner attempts to rebut this issue by referencing the use of "supported on" in different claims and patents as consistent with their defintiion, and supported by CAFC precedent. Whether or not tools of the district court will trump a straight forward BRI analysis remains to be seen. Seems to me that the PTAB could easily dispatch the whole petition by finding the claims broad enough to cover the indirect embodiment supported by the priority chain. In that case, the hairier issue of support for the direct connection is readily side-stepped along with the remainder of the petition.
One additional argument that caught my eye pertained to patentee estoppel. That is, the petioner noted that claims of a related patent (claims directed to pins/bar/base) were disclaimed in IPR2014-00218. Based on the operation of 37 C.F.R. § 42.73(d)(3), petitioner argues that the patentee should not be allowed to defend the '420 claims in the PGR. The policy behind 42.73 (inspired by interference practices) is to prevent a patentee from walking away from the PTAB only to secure the same claims in another PTO proceeding. But, the claims of the '420 patent here "were obtained" prior to completion of the IPR. Moreover, given the claims of the '420 are broader— pins/base— such an amendment could not have been raised in the IPR (no broadening allowed). Interesting issue to watch should the trial proceed.
Timing likely drove the decision to file a PGR here instead of IPR—this is a dilema that will face many in the years ahead. That is, when sued at the time of issuance, waiting 9 months for the PGR window to close so that an IPR can be pursued may not be realistic. (for avoiding the broader PGR estoppel). Waiting 9 months for IPR may be construed as gamesmanship should a stay be pursued, and (2) adding in the 6 month wait for an IPR Order may push the date out for a grantable motion to stay some 15 months (9 months + 6 months), which may be problematic for faster district court dockets.