Jones Day
On the 1st of December 2023, Intelligent Wellhead Systems, Inc. (Intelligent) filed a request for inter partes review (IPR) of U.S. Patent No. Downing Wellhead Equipment, LLC (Downing) was assigned the patent No. 11,401,779, also known as “the ‘779 patent” (“IPR256”). Intelligent asserted that it was not patentable on five grounds, including a ground of anticipation and an obviousness basis that both relied solely on U.S. Patent Application Publication No. 2022/0268141 to Krupa et al. (“Krupa”). Krupa was used in conjunction with another reference to support a second obviousness ground. Krupa is a published version of an application filed in the U.S. on February 18, 2022. It claims priority over a provisional application filed almost a year earlier, on February 25, 2021 (the Krupa Provisional). Importantly, the priority of the ‘779 Patent dates to May 17, 2021. This is after the filing date for the Krupa provisional but before the nonprovisional U.S. Application. Intelligent asserted in the petition that Krupa is prior art to the ‘779 Patent, merely citing the filing date of the Krupa Provisional.
In its preliminary response, Downing challenged the prior art status of Krupa. It claimed that Intelligent had failed to prove in its petition that “the subject matter relied on in Krupa was supported by the Krupa Provisional” and thus had not met its burden to show that Krupa qualifies for prior art. Intelligent requested to submit an initial reply brief to address Krupa’s arguments. It argued that it could not reasonably have anticipated a challenge to Krupa’s prior art status when Downing’s preliminary answer was submitted. The PTAB denied the request, noting it was clear on the face of Krupa that Intelligent would not be able to rely on Krupa’s actual filing date but instead have to establish an earlier prior date. The PTAB explained that when the filing date for a prior art patent is earlier than the filing date for a challenged patent the petitioner only needs to refer to the filing date on the face of each patent document to prove the reference qualifies. When the actual filing date is after the challenged patent, as was the case in IPR256, the petitioner must establish that the subject matter of the reference is described in an earlier application. The PTAB noted that the burden to establish that a reference patent document is entitled to the filing of its provisional application “falls squarely on
.” The PTAB noted that the burden to establish that a reference patent document is entitled to the filing date of its provisional application thus “falls squarely on [Intelligent].”
Because Intelligent did not explain in its petition how the Krupa Provisional supports the relevant subject matter relied on in Krupa, or even introduce the Krupa Provisional into the record, this burden was not met. The PTAB concluded, without a substantive evaluation, that Intelligent had no reasonable likelihood of prevailing in any of the three grounds relying on Krupa in whole or significant part. The rest of the institution decision was a nuanced discussion on whether the remaining prior arts references revealed the limitations of claims of the ’779 Patent. This included fluid being “continuously pumped” to either a first or second valve. The PTAB determined that Intelligent had not shown that there was a reasonable likelihood of prevailing with regard to any challenged claims, and thus denied institution.
Takeaway
Petitioners should ensure to explain in their petitions how their prior art references meet threshold qualification standards. Failure to do so could prevent the references from being evaluated as meritorious in relation to the challenged patent.
