Unified Patents v. Berman (IPR2016-01571): Applying § 325(d) Ground by Ground

Unified Patents Inc. v. John L. Berman, IPR2016-01571 (Paper 10, December 14, 2016), is an early example of the Board applying 35 U.S.C. § 325(d) separately to each ground in a petition rather than to the petition as a whole. It is listed here with the Board’s informative decisions. Designations can change, so check the USPTO’s current list of precedential and informative decisions.

The petition challenged claims 2–16 of Berman’s U.S. Patent No. 5,523,791, an expired patent on overlaying images on television video and distorting the video picture. The patent had been asserted in several district court cases.

Background

Unified Patents asserted obviousness over Russell, alone or with an Intel coprocessor user’s manual, against claims 2–8 and 10–15, which concern inserting an overlay image onto background video. It asserted Russell combined with Marlton against claims 9 and 16, which concern distorting a video image.

The patent owner argued that Russell had already been considered and overcome during prosecution, and that the petition ignored the applicant’s arguments distinguishing it. The prosecution history showed that the examiner rejected original claims as anticipated by Russell; the applicant responded with arguments distinguishing Russell’s overlapping windows and added new claims; an interview summary showed the examiner considered Russell against the new claims; and the examiner later withdrew the Russell rejection and indicated many claims were allowable over the art of record.

What the Board decided

The Board first said it must decide whether a ground presents the same or substantially the same art or arguments before deciding whether to exercise discretion. It then split the analysis.

Claims 2–8 and 10–15

Although the issued claims were never themselves rejected over Russell, they were added in direct response to the Russell rejection, and the record showed the examiner considered Russell against them. The Intel manual was used for the same teaching, manipulating and displaying windows, that the applicant had distinguished in Russell, so it was substantially the same art. The petition acknowledged the prosecution history but offered no argument distinguishing the examiner’s prior consideration of Russell and no compelling reason to readjudicate it. The Board found that doing so would not be an efficient use of its resources and denied these grounds under § 325(d).

Claims 9 and 16

The result differed here. The petition relied on Marlton, not Russell, for distorting the image, and Marlton had not been cited in prosecution. The patent owner argued only that Russell had been considered. That was not enough, so the Board declined to deny this ground under § 325(d).

It then reached the merits and found no reasonable likelihood of success under 35 U.S.C. § 314(a). The petition’s claim map for the “video output means” consisted of block quotations without explanation, and the petition did not map any element of the references to the joystick control structure that the Board adopted, at the petitioner’s own proposal, as the structure for “operator input means.” The Board denied the petition in full.

Why it matters

The decision shows two practice points that remain relevant:

• § 325(d) is applied ground by ground. A patent owner must show that each targeted ground repeats what the Office saw. Pointing to one previously considered reference does not cover a ground that depends on new art for the key limitation.
• A petitioner who reuses examined art should engage with the prosecution history. Acknowledging the history without explaining why the examiner’s view was wrong left the Board with no reason to revisit it.

The merits ruling is a reminder about petition drafting: block quotes are not analysis, and means-plus-function terms must be mapped to the corresponding structure. See the basics of an IPR petition. For related § 325(d) decisions, see Cultec v. StormTech and Becton, Dickinson v. B. Braun; for the threshold standards generally, see the different threshold standards.

Later developments

The Board later organized the § 325(d) inquiry into factors in Becton, Dickinson and then into a two-part framework in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (Paper 6, 2020) (precedential). Discretionary-denial practice has changed repeatedly, so readers should check current USPTO guidance.

Key takeaways

• The Board denied grounds based on Russell under § 325(d) because the examiner had considered it and the petition gave no reason to revisit that view.
• Art used for the same teaching as considered art was treated as substantially the same.
• A ground relying on new art for the key limitation was not denied under § 325(d), but failed on the merits.
• Petitions need explanation, not block quotes, and must map construed means-plus-function structure.