E Ink Corporation v. Research Frontiers Incorporated: Decision Denying Institution IPR2014-00422
Thursday, August 21, 2014

Takeaway: If an asserted prior art reference does not disclose a lower limit of a recited particle size range, and the lower limit is deemed to be an important aspect of the claimed invention, then the Board may conclude that the reference does not describe the claimed range with sufficient specificity to support a finding of anticipation.

In its Decision, the Board declined to institute inter partes review of claims 1-2, 14-20, 22-27, and 29 of the ‘185 patent.  Petitioner had filed a Petition challenging these claims, in reply to which Patent Owner had filed a Preliminary Response.

The ‘185 patent relates to SPD films and light valves comprising liquid suspensions of heat-reflective particles of mixed metal oxides.  It discloses a device comprising a liquid suspension of anisometrically shaped particles of a heat-reflective mixed metal oxides (“MMO”).  Petitioner had challenged these claims under 35 U.S.C. §§ 102 and 103 in view of multiple references.

The Board considered Petitioner’s challenges to the claims as interpreted under the “broadest reasonable interpretation” (BRI) standard.  Among the claim terms construed by the Board were: light modulating unit, light valve, SPD light valve, anisometrically shaped, mixed metal oxide, heat-reflective, light valve suspension, and liquid light valve suspension.

Next, the Board addressed Petitioner challenge to claims 1-4, 7–10, 12, 14-16, 19, 20, 22, 23, 26, 27, and 29 as being anticipated by Saxe under 35 U.S.C. § 102(b).  In doing so, the Board gave consideration to the Declaration of Petitioner’s declarant, Dr. Anne Chiang.

In this regard, Petitioner’s position was that Saxe disclosed each limitation recited in claims 1, 15, and 22.  Nonetheless, the Board was instead persuaded by Patent Owner’s assertion that Saxe does not disclose particles having “an average length in a range between about 1 micron and about 50 nanometers” (claim 1) or “an average length of between about 50–200 nanometers” (claims 15 and 22).  In particular, the Board found that “although the particle size range disclosed in the ’185 patent overlaps with the disclosure in Saxe, Saxe does not discuss a lower limit for the particle size.”  In response, Petitioner’s declarant Dr. Chiang attempted to argue that the ‘185 patent did not explain that the smaller average length ranges provides any unexpected results.  But the Board, relying disclosure in the ‘185 patent stating that “if the particles have too small a length, a . . . problem arises,” concluded that the ‘185 patent indicates that a lower particle size limit was an important aspect of the claimed invention.

In view of the foregoing, the Board concluded that “Saxe does not describe the claimed range with sufficient specificity to anticipate this limitation of the claim. See Atofina v. Great Lakes Chemical Corp. 441 F.3d 991, 999 (Fed. Cir. 2006).”  The Board went on to conclude that, “[a]ccordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 1, 15, and 22 are anticipated by Saxe under 35 U.S.C. § 102(b).”

Petitioner’s arguments that dependent claims 1-4, 7-10, 12, 14-16, 19, 20, 22, 23, 26, 27, and 29 were anticipated by Saxe were rejected by the Board for essentially the same reasons.  The Board reached essentially the same conclusions with respect to other challenges based on Saxe as well, including Petitioner’s challenge to claims 1-4, 7-10, 12, 14-16, 19, 20, 22, 23, 26, 27, and 29 based on Saxe and the Pigment Handbook; Petitioner’s challenge to claims 1-3, 5-10, 12, 14, 15, 17-20, 22, 24-27, and 29 based on Saxe and Sakoske; Petitioner’s challenge to claims 1-4, 7-10, 12, 14-16, 19, 20, 22, 23, 26, 27, and 29 based on Saxe and Shepherd’s Infrared Black 411 Documents; and Petitioner’s challenge to claims 1-12, 14-20, 22-27, and 29 based on Saxe in combination with the Pigment Handbook, Sakoske, or Shepherd’s Infrared Black 411 Documents.

The Board next focused on the challenge to claims 1-3, 7-12, 15, 19, 20, 22, 26, and 27 based on the proposed combination of Tada and Saxe under 35 U.S.C. § 103.  Ultimately the Board was persuaded by Patent Owner, rather than Petitioner, in regard to this challenge.  As stated by the Board, “we have determined Saxe does not disclose the recited particle size range,” and “[t]he range recited in claim 1 of the ’185 patent, 50 nm to 1,000 nm range (claim 1) and 50-200 nm range (claims 15 and 22) does not entirely overlap that disclosed in Tada, which teaches a much larger range of particle sizes.”  Moreover, the Board held that Petitioner had not sufficiently explained why one skilled in the art would limit the particle size to the ranges recited in claims 1, 15, and 22, i.e., Petitioner did “not explain why a person of ordinary skill in the art would have found it obvious to require the particle to be above 50 nanometers in size.”  Accordingly, the Board found that Petitioner had not met its burden of demonstrating that claims 1-3, 7-12, 15, 19, 20, 22, 26, and 27 had a reasonable likelihood of being found unpatentable as obvious over the combination of Tada and Saxe.

Petitioner had also challenged that claims 1-4 were unpatentable under 35 U.S.C. § 102 as being anticipated by Morita or were unpatentable as obvious under 35 U.S.C. § 103 over Morita.  But the Board was not persuaded by these arguments.  More specifically, the Board was not persuaded that Morita teaches “anisometrically shaped particles” as recited in claim 1, and since “Petitioner has not presented additional argument or evidence as to why an ordinarily skilled artisan would have found Morita teaches ‘anisometrically shaped particles’ or would have found it obvious to modify the particles to be anisometrically-shaped,” the Board concluded that a reasonable likelihood had not been shown that claims 1-4 should be found unpatentable as obvious over Morita.

E Ink Corporation v. Research Frontiers Incorporated, IPR2014-00422
Paper 6: Decision Denying Institution of Inter Partes Review
Dated: August 14, 2014
Patent: 6,606,185
Before: Toni R. Scheiner, Debra K. Stephens, and Trenton Ward
Written by: Stephens

 

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