Petitioner Mistakenly Ignores Not-So-Optional Claim Limitation

by | Nov 21, 2024 | Claim Construction, Evidentiary Issues, Expert Witnesses

By Jack Graves and Matt Johnson –

The PTAB recently excluded a portion of Duration Media LLC’s (Petitioner) reply declaration for containing improper new evidence in an inter partes review petition filed against Rich Media Club LLC (Patent Owner) challenging all claims of U.S. Pat. No. 11,443,329. Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (PTAB Aug. 19, 2024). Specifically, the PTAB found that Petitioner could not submit a second declaration by its expert to address a claim limitation that Petitioner wrongly considered to be optional and chose not to previously address.

The ’329 patent relates to systems and methods of creating electronic advertisements using licensed digital content and distributing such advertisements for display at desired network locations. Id. at 3. A limitation of claim 1 in the ’329 patent specifically requires, “in response to a determination that the predefined area that is used to display the advertisement has been in view within the visible area of the browser window for a predefined period of time, causing a communication to be sent to one or more dispatcher servers . . . .”  Id. at 5. Petitioner argued that the italicized portion of this limitation was optional and non-limiting in its petition, and its original expert declaration included no opinion on whether this limitation was taught by the prior art. Id. at 27.

In the institution decision, however, the PTAB found that this limitation was, in fact, limiting. Id. at 24. Even with the knowledge that the PTAB had construed this term as limiting, Petitioner’s expert subsequently testified that he had “no opinion” of whether the prior art teaches this limitation. Id. at 28. Later on, with its reply brief, Petitioner attempted to cure its incomplete challenge by submitting new expert declarations that included opinions explaining that this specific limitation was actually taught by the asserted prior art. Id. at 24. In response, Patent Owner brought a motion to exclude this new evidence, arguing that this claim limitation “was always part of the ’329 patent claims and Petitioner always had the burden to meet it with prior art.”  Id. In opposition to this motion, Petitioner tried to assert that Patent Owner’s arguments with respect to this limitation were “surprising,” and therefore not new evidence that could have been presented earlier. Id. at 25.

Generally, a “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).  Moreover, “[a]n obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” Univ. of Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 (Fed. Cir. 2021); see In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.”).

The PTAB ultimately granted Patent Owner’s motion to exclude, finding the new expert opinions regarding the prior art to be “much too late.” Id. at 28. The PTAB explained that, the “viewability test” is a claim limitation, and “Petitioner should have anticipated that Patent Owner would argue that limitation.” Id. at 25. Without any expert testimony addressing the “determination” limitation, the PTAB then held that Petitioner failed to show that claim 1 would have been obvious over the prior art. Id. 29-30. Notably, one judge dissented from the decision, arguing that Petitioner’s new expert testimony was properly responsive to the institution decision and that, even without the reply declarations, the petition and reply show persuasively that the prior art discloses the disputed limitation.

Takeaway: Petitioners should take care to ensure that all challenged claim limitations are expressly addressed, even where some limitations may arguably be construed as optional or non-limiting.

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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.