Articles Posted in PTAB

Published on:

by

In a recent Patent Trial and Appeal Board (PTAB) decision, the Board denied institution of an inter partes review (IPR) in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00966), highlighting the critical importance of consistent claim construction strategies in patent challenges.

The Core Dispute

The controversy centered on Cambridge Mobile’s approach to construing the claimed “component” terms in U.S. Patent No. 9,333,946 B2. The patent owner, Sfara, Inc., argued for denial based on Cambridge Mobile’s divergent claim construction positions between district court litigation and the IPR petition.

In district court proceedings, Cambridge Mobile advocated for means-plus-function construction under 35 U.S.C. § 112(f), contending the terms were indefinite. However, in their IPR petition, they simply argued for “plain and ordinary meaning” without explaining this shift in position or providing an alternative means-plus-function construction.

Regulatory Framework

The dispute brought Rule 104(b)(3) into sharp focus. This regulation requires IPR petitions to explicitly state how challenged claims should be construed. For means-plus-function claims, petitioners must identify specific portions of the specification describing corresponding structure for claimed functions.

The significance of this requirement is underscored in the USPTO’s Consolidated Trial Practice Guide, which warns that petitioners who fail to address § 112(f) construction “risk failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Continue reading

Published on:

by

In a recent Patent Trial and Appeal Board (PTAB) decision, the particularity requirement emerged as a critical factor in determining whether to institute an inter partes review (IPR). The case, involving IKEA Supply AG’s challenge to Everlight Electronics’ LED patent, highlights how failing to meet this requirement can doom even technically meritorious patent challenges.

Understanding the Particularity Requirement

The particularity requirement, codified in 35 U.S.C. § 312(a)(3), demands that IPR petitions identify “with particularity, each claim challenged, the grounds on which the challenges to each claim are based, and the evidence that supports the grounds for challenge to each claim.” As the Federal Circuit emphasized in Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'”

Why Particularity Matters

The requirement serves multiple purposes: it ensures efficient review, provides fair notice to patent owners, and prevents what some practitioners call “kitchen sink” petitions that overwhelm both the Board and respondents with numerous alternative theories. Continue reading