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  • York Faulkner

Error to Require Proof of Prior Art Enablement in Inter Partes Review Petition

Updated: Sep 10

The court ruled that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee . . . has the burden to prove nonenablement for such prior art.”


In Apple, Inc. v. Corephotonics, Ltd., No. 2020-1438 (Fed. Cir. June 23, 2021), the Court of Appeals for the Federal Circuit concluded that the USPTO Patent Trial and Appeal Board (“the Board”) improperly shifted the initial burden of addressing prior art enablement to Apple, the inter partes review petitioner. According to the Federal Circuit, teachings provided in prior art references are presumed sufficient to enable one of ordinary skill in the art to practice the disclosed technology, and an IPR petitioner therefore need not address the prior art’s enablement in its petition for inter partes review. Id. at 10-11.


In this case, Apple had petitioned for inter partes review of U.S. Patent No. 9,586,712 (“the ’712 patent”). The claims of the patent are directed to a miniaturized multi-lens assembly for use in camera-equipped portable electronic devices. As an example, Figure 1A of the patent depicts a five-lens embodiment of the claimed invention. The patent’s claims further recite multi-lens assemblies where, among other things, the ratio of “total track length” (TTL) to “effective focal length” (EFL) is less than one. TTL is the measurement from the first lens to the image sensor or film, and EFL is the measurement from a principal light bending plane within the lens to the focal point on the image sensor or film. According to the patent, a TTL/EFL ratio of less than 1.0 results in improved image quality. Id. at 2-3.


Apple’s petition challenged a total of eleven claims of the ’712 patent—alleging that eight of the claims lacked novelty and were anticipated by Japanese Patent Publication JP 2013-106289 (“Konno”). The Konno reference disclosed a five-lens assembly with a TTL/EFL ratio of less than one and provided further details that appeared to “read on” each element of the eight challenged claims. There was, however, one problem. The lens specifications for the Konno assembly placed lens 4 and lens 5 in overlapping positions, which is not physically possible. Id. at 6. In its petition, Apple characterized this lens overlap as an error but did not otherwise explain how the Konno lens assembly was enabled.


In responding to Apple’s petition, the patentee asserted that Konno’s lens assembly was not enabled and therefore did not anticipate the challenged patent claims. Id. at 11. In its reply, Apple for the first time presented its evidence that Konno provides an enabling and anticipating disclosure. Id. The Board, however, refused to consider Apple’s enablement evidence. Id.


In its determination, the Board acknowledged legal precedent in the context of litigation and patent prosecution holding that prior art references are presumed enabled and that the burden of proving a lack of enablement falls on the patentee. Id. at 10 (citing, for example, Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003) and In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012)). The Board, however, distinguished that precedent from the present case, reasoning that “none of these cases were in the context of AIA trial proceedings.” Id. The Board concluded that Apple’s initial identification of Konno’s lens alignment error overcame any presumption of enablement, requiring Apple to address enablement concurrently with its initial anticipation challenge. Id. at 9. “In other words, the Board shifted the burden to Apple to provide evidence before institution (i.e., in its petition) that Konno was enabling as part of its burden to prove anticipation.” Id.


On appeal, the Federal Circuit rejected the Board’s analysis, explaining that it saw no “principled distinction between . . . district court litigation and AIA trial proceedings.” Id. at 10. The court ruled that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee . . . has the burden to prove nonenablement for such prior art.” Id. The court ruled further that the Board’s rejection of Apple’s proffered evidence of Konno’s enablement “was error because the Board in effect shifted the burden to Apple to prove enablement before any assertion of nonenablement was raised.” Id.


The Federal Circuit nonetheless found that the Board’s burden shifting error “was harmless because, even affording Apple the presumption, we conclude that the Board correctly found that Konno cannot anticipate the challenged claims as a matter of law.” Id. at 11. The Board had concluded that the lens assembly disclosed in Konno, as written, was inoperative due to the specified overlap of lens 4 and lens 5. Id. In other words, “Konno could not anticipate the challenged claims absent impermissible modification.” Id. (citing Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 405 (Fed. Cir. 2008) (“prior art that must be modified . . . does not anticipate”)). The court clarified the Board’s conclusion, explaining that although Konno’s disclosure satisfies each of the challenged claim elements, “the problem is that the relied upon embodiment is inoperative unless the overlap between L4 and L5 is fixed,” and “such inoperative embodiments cannot be anticipatory.” Id. at 12 (citing In re Dowty, 118 F.2d 363, 366 (C.C.P.A. 1941)).


In conclusion, the Federal Circuit noted that “[s]uch modifications are permissible only in an obviousness analysis.” Id. at 11. In so doing, the court highlighted a potential alternative argument that Apple might have considered in view of the lens placement error in Konno. Although the lens placement error precluded Konno’s use as an anticipatory reference, the court suggested that Konno may have been asserted in an alternative obviousness challenge to the patent claims—where conceptual modifications to lens positioning may be permissible. However, since Apple did not include the alternative obviousness challenge in its petition, that theory could not be raised after the initial petition, and we can only speculate about its merit in invalidating one or more claims of the ’712 patent. See IPR Petition’s Failure to Challenge Patent Claims with Particularity Forfeited Meritorious Arguments (discussing difficulty of weighing the assertion of alternative arguments). As such, the Federal Circuit affirmed the Board’s determination that Apple failed to meet its burden in proving the invalidity of the eight challenged claims.

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