Takeaway: In order to show a prior art reference anticipates the claims, one must show that a single embodiment discloses all of the claim limitations. One should pursue an obviousness ground if one asserts that multiple embodiments taken together disclose all of the claim limitations.

In its Decision Denying Institution, the Board found that Petitioner failed to demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims and denied institution ofinter partes review.  The ’913 Patent relates to radiant energy systems that have great applicability in military optical system applications for detecting the presence of an enemy employing surveillance equipment and for neutralizing this surveillance capability.

The Board began with claim construction, stating that claims are interpreted using the broadest reasonable construction in light of the specification of the patent. Petitioner did not propose specific constructions for any of the challenged terms and instead proposed that they be construed according to their broadest reasonable interpretation consistent with the Specification.  Patent Owner proposed constructions for multiple terms, and the Board adopted all of Patent Owner’s constructions in light of the absence of an alternative construction.

The Board then turned to the asserted grounds of unpatentability. First, Petitioner argued that claims 48-53 are anticipated by Hock.  The Board agreed with Patent Owner that Petitioner improperly relied upon different embodiments of Hock to disclose the elements recited in independent claims 48 and 53, which the Board noted may be proper for an obviousness ground, but not for anticipation.  Therefore, Petitioner failed to demonstrate that Hock discloses in a single embodiment each and every element of claims 48 and 51.  The Board also agreed with Patent Owner that under the construction of “optical gain,” Hock fails to disclose that limitation.  Because the remaining claims depend from claims 48 and 51, the Board found that Petitioner’s argument failed as to those claims as well.

The Board next examined Petitioner’s assertion that claims 48-53 are anticipated by Zoot. Patent Owner argued that Petitioner failed to demonstrate that Zoot discloses “optical gain.”  The Board noted that Petitioner’s declarant makes only conclusory statements about Zoot’s alleged disclosure of “optical gain;” therefore, the Board was not persuaded by this testimony.

Panasonic Corporation and Panasonic Corporation of North America v. Optical Devices, LLC, IPR2014-00302
Paper 9: Decision Denying Institution of Inter Partes Review
Dated: July 11, 2014
Patent RE42,913 E
Before: Erica A. Franklin, Glenn J. Perry, and James B. Arpin
Written by: Arpin
Related Proceedings: Optical Devices, LLC v. Panasonic Corp., No. 1:13-cv-00726 (D. Del.); In the Matter of Certain Optical Disc Drives, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-897 (ITC); IPR2014-00303