/>iTakeaway: When all of the proposed obviousness combinations include the same reference, the Board will deny institution if it determines that Petitioner did not establish that the reference was prior art.
In its Decision, the Board denied three petitions to institute inter partesreview of claims in U.S. Patent Nos. 8,482,274 B2; 8,536,856 B2; 8,598,864 B2 (the “Power Survey Patents”).
The Power Survey Patents all relate generally to apparatuses and methods for detecting voltage anomalies in electric fields. As summarized by the Board, “[t]he Power Survey Patents explain that, based on the electric field data, the system can identify a voltage anomaly in the electric field and then send a signal to an indicator for alerting a user to the presence of the voltage anomaly in the electric field.”
All of Petitioner’s proposed obviousness combinations relied on a document referred to as “the Sarnoff Report,” and the Board began by analyzing whether the Sarnoff Report was in the prior art.
The Board first set forth the legal standards. It began with a discussion of what constitutes a “printed publication,” and noted that this is a legal question based on underlying factual determinations. Citing Federal Circuit caselaw, the Board stated that, under 35 U.S.C. § 102, “‘public accessibility’ is the “touchstone in determining whether a reference is a ‘printed publication.” “A reference is publicly accessible ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . .”’ The Board also stated that “the party seeking to introduce the reference ‘should produce sufficient proof of its dissemination or that it has otherwise been available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.’” Next, the Board noted that § 102 is not the only source of prior art for obviousness analyses and stated that “[v]alid prior art may be created by the admissions of the parties.”
Next, the Board analyzed whether the Sarnoff Report was a printed publication. It rejected Petitioner’s argument that the applicant admitted that the report was a “publication” during prosecution. The Board also rejected Petitioner’s argument that, in response to a rejection from an examiner based on the Sarnoff Report, the applicant’s failure to argue that the report was not a printed publication should be construed as an admission that it was. Next, the Board rejected Petitioner’s argument that the applicant’s inclusion of the Sarnoff Report on an IDS should be treated as an admission that it was prior art. Ultimately, the Board concluded that Petitioner did not show that the Sarnoff Report qualified as prior art and that, consequently, Petitioner did not show a reasonable likelihood that it would prevail in the Petitions.
L-3 Communication Holdings, Inc. and Premier Utility Services, LLC, IPR2014-00832, IPR2014-00835, IPR2014-00838
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: November 14, 2014
Patents: 8,482,274 B2; 8,536,856 B2; 8,598,864 B2
Before: Karl D. Easthom, Kevin W. Cherry, and Robert J. Weinschenk
Written By: Cherry
Related Proceedings: IPR2014-00834, 836, 839; Power Survey, LLC v. Premier Utility Services, Civil Action No. 2:13-cv-05670-FSH-MAH (D.N.J.)
