Tesla, Inc. v. Intellectual Ventures II

The Director granted Patent Owner's request for Director Review, vacated the Final Written Decision as to the ground involving Labaziewicz, and remanded for further briefing. The Director rejected the argument that the Board violated the APA or erred in finding that Patent Owner had not met its burden of production on entitlement to the '854 provisional's filing date for the independently controlling limitation. Because neither party briefed that limitation in several papers, the Director ordered briefing on remand to avoid any appearance of unfairness. A patent owner claiming an earlier provisional date to predate a reference bears a burden of production covering every limitation of the challenged claim, and the Board may find that burden unmet even if no one briefed the limitation. Even so, the Director may remand for briefing out of fairness concerns. Decision under review: the Final Written Decision (Paper 31) held claims 22, 23, 28, and 30 of the '180 patent unpatentable as obvious over a combination including Labaziewicz, and found claims 1-3, 10-12, 24, 25, 32, and 33 not shown unpatentable. Issue: Petitioner argued that claim 22 lacked written description support in the '854 provisional, but did not discuss the 'independently controlling' limitation. Patent Owner sought the provisional's date to predate Labaziewicz but did not address that limitation, and neither the Reply nor the Sur-reply did either. The Board relied on Dynamic Drinkware and Tech. Licensing Corp. v. Videotek to find that Patent Owner had not met its burden of production to show provisional support for that limitation. Patent Owner argued that the finding violated the APA, 5 U.S.C. 554(b)(3), 554(c), and 556(d), because no party briefed the issue. The Director disagreed that the Board violated the APA or erred in considering whether the burden of production was met. Order: Director Review is granted, the Decision is vacated-in-part as to the Labaziewicz ground, and the case is remanded for briefing on written description support for the limitation. The Board will then reissue its decision, absent good cause within 60 days of the Order. KEY QUOTE: "The Board will then re-issue the Final Written Decision with any appropriate modifications after considering the additional briefing." (Paper 33, p. 4)