PGR Ineligible – Petitioner Failed to Show Post-AIA Priority

by | Aug 25, 2021 | PGR

By Hannah Mehrle and Matt Johnson –

Ocado Group (“Petitioner”) filed a petition requesting a post-grant review of a claim from U.S. Patent No. 10,696,478 (’478 Patent) owned by AutoStore Technology (“Patent Owner”).  The Board concluded that the Petitioner did not meet its burden of showing that it was more likely than not that the ’478 Patent has, or had at least one claim having an effective filing date on or after March 16, 2013.  Accordingly, the Board held that the ’478 Patent was not eligible for post-grant review.

The application that issued into ’478 patent was filed on October 1, 2019.  It claims priority to a chain of other applications, with the earliest being a Norwegian application filed on December 10, 2012.  Under Petitioner’s proposed construction of the asserted claim, which is outlined below, the asserted claim would not have written description support in the 2012 Norwegian application.  If the PTAB agreed with Petitioner’s construction, the asserted claim would have an effective priority date of on or after March 16, 2013, making it eligible for PGR review.  The PTAB examined Petitioner’s proposed construction, but ultimately disagreed.

Petitioner argued that the claim terms “a plurality of rolling members attached to the vehicle body” and “vehicle body” should be construed to require a robot body with at least one set of wheels arranged fully within the vehicle body, which necessarily covers more than a single grid space in at least one lateral direction.

First, the Board considered the claim language.  The Board disagreed with Petitioner’s proposed construction stating that the claim was clear, and only required a plurality of rolling members, attached about the cavity, to the vehicle body and arranged for travelling along the storage structure in first and second directions.

Next, the Board looked to the specification.  Petitioner argued that the specification required that the wheels of the “inventive robot” must be arranged in one specific way.  However, the Board disagreed, finding the specification supports more than one way to arrange the wheels.

The Board considered prosecution histories next.  It stated that in the prosecution history of the Asserted Patent, the Examiner’s reasons for allowing the asserted claim do not mention or otherwise support Petitioner’s proposed construction.  The Board also examined the prosecution of the Norwegian priority application, but decided to give the statements from that prosecution history no probative weight in construing the asserted claim.

Lastly, the Board considered Petitioner’s arguments regarding related proceedings. First, the Board considered the related ITC proceeding, and found that Patent Owner’s proposed construction there did not necessarily lead to showing that the Norwegian Priority application lacked written description support for the asserted claim.  Additionally, the Board stated that Petitioner did not establish sufficient links between a Norwegian proceeding and the current proceeding for the Board to consider whether the Patent Owner’s statements in the Norwegian proceeding supported Petitioner’s proposed construction.

Based on the evidence, the Board found that Petitioner’s proposed construction was not supported by the evidence.  As properly construed, the 2012 Norwegian application supported the issued claims.  Accordingly, the Board found that the Asserted Patent had an effective filing date before March 16, 2013, making it ineligible for post-grant review.

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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.