Oral Argument of the Week: IPR Licensing, Inc. v. ZTE Corp.

The oral argument of the week is from  IPR Licensing, Inc. v. ZTE Corp.  I thought this oral argument was interesting for its discussion of obviousness issues and some good sound bites by Judge Taranto about “present invention” language and not taking “present invention” out of context.

In a previous post from months ago [link], I noted some comments by Judge Lourie about burying references.  In this oral argument, as well, Judge Lourie was quick to ask why so many references had been cited in the prosecution of the patent.  You can listen to the sound bite [here].  The patent is available [here].  There were ten columns of cited references — and an extensive family history of related applications/ patents.  Curiously, Judge Lourie asked how the invention could be non-obvious if there were hundreds of references cited by the applicant during prosecution.  I take that comment as a suggestion that there is a correlation between the number of references cited and the obviousness of an invention.  To my way of thinking, that simply does not follow.  There are many reasons to cite references.  In this case, for example, it appears there was an extensive family history and previous ITC litigation.

Moreover, the Federal Circuit’s decision in Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253 (Fed. Cir. 2012) incentivizes applicants to cite more art so that such art won’t be given more weight in a subsequent obviousness analysis.

While the ultimate burden of proof does not change, new evidence not considered by the PTO “may `carry more weight’ … than evidence previously considered by the PTO,” and may “`go further toward sustaining the attacker’s unchanging burden.'” Id. at 2251 (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350 (Fed.Cir.1984)). “[I]f the PTO did not have all material facts before it, its considered judgment may lose significant force” and the burden to persuade the finder of fact by clear and convincing evidence may, therefore, “be easier to sustain.” Id. Instead, the fact that references were previously before the PTO goes to the weight the court or jury might assign to the proffered evidence. Id.

Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012).

Further, if cited art is considered part of the intrinsic evidence used to assist in performing claim construction — see, e.g., this [previous post] — query whether a court can put a limit on how much intrinsic evidence an applicant elects to add to the file.

All that being said, ten columns of references is indeed a lot.

The court’s decision in IPR Licensing, Inc. v. ZTE Corp. is available [here].

The entire oral argument from IPR Licensing, Inc. v. ZTE Corp. is available [here].

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