Two Separate Analyses: Nonobviousness vs Enablement

by | Feb 25, 2025 | PTAB News, Request for Reconsideration

By Sabrina Bellantoni and Matt Johnson –

Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement.  Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 78 (December 12, 2024).

In May 2023, Duration Media LLP (“Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of U.S. Patent No. 11,443,329 (“the ’329 patent”).  The PTAB granted the petition and with a split decision, found that Petitioner did not meet its burden of showing the claims were unpatentable, as Petitioner failed to show that the prior art taught a claim limitation referred to as the “viewability test.”  For a summary of the Final Written Decision see here.  Afterwards, Petitioner filed a request for Director Review, arguing that the PTAB erroneously concluded that the prior art reference, U.S. Patent No. 7,725,502 (“Badros”), did not teach the viewability test.  Director Vidal granted Director Review.

The ’329 patent discloses determining whether an advertisement has been in a user’s view for a predetermined amount of time before a new advertisement appears.  Badros was the basis of Petitioner’s obviousness grounds arguing that it teaches the viewability test.  The PTAB found that Badros only refers to whether the ad has been served from the server and not whether the ad has been made visible to the user, which is what the ’329 claims.  The PTAB also concluded that the reference did not teach how to perform the viewability test and that Petitioner did not identify any description or claim language showing whether the reference determined if an advertisement is actually in view on the device.

Director Vidal found that the majority decision conflated enablement and obviousness by focusing on whether Badros discloses how to perform the test.  The PTAB never adequately explained how Badros did not disclose the viewability test, but rather adopted Patent Owner’s arguments incorrectly and analyzed whether the prior art taught how to perform the viewability claim limitation.  As explained in the Decision’s dissent and Director Vidal’s arguments, that is an issue of enablement, and not whether the prior art disclosed the limitation.  Director Vidal references sections in Badros that expressly show disclosure of advertisements being viewable to a user.  Director Vidal also found when a reference has clear disclosure and is easily understandable, expert testimony is not necessary.

Director Vidal, finding that Petitioner did show that Badros disclosed the viewability test, remanded back to the PTAB to decide whether Badros, alone or in combination with other evidence, would enable a person of ordinary skill in the art to carry out the viewability test.

Takeaway:

Practitioners are reminded that obviousness and enablement are two separate analyses that both require thoughtful argument in an IPR.

 

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.