The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text, Inc., IPR2023-01390, Paper 17 (PTAB Feb. 14, 2024). Specifically, the PTAB found that a primary reference included in every ground was commonly owned by the same person (Webroot), and therefore 35 U.S.C. § 103(c)(1) disqualified this reference as prior art. Id. at 8.

The ’243 patent relates to systems and methods of detecting, controlling, and removing pestware, such as programs that collect information about a person or an organization. Id. at 2. In the petition, both of Trend Micro’s asserted grounds challenged the ’243 patent using a Piccard reference (U.S. Pat. Pub. No. 2007/0006310), which Trend Micro relied on for its asserted unpatentability of all claims. Id. at 6. In its preliminary response, Open Text argued that Piccard was disqualified as prior art under pre-AIA 35 U.S.C. § 103(c)(1). Id.

Similar to the current provision in § 102(b)(2)(C), pre-AIA 35 U.S.C. § 103(c)(1) was intended to incentivize collaborative research efforts, especially involving non-profit entities like universities, by providing a mechanism to protect inventions that result from such collaborations from being considered obvious. Under pre-AIA § 103(c)(1), prior art falling under § 102(e) does not preclude patentability if it was “owned by the same person or subject to an obligation of assignment to the same person.”

Open Text argued that Piccard could potentially qualify as prior art only under pre-AIA § 102(e), since its publication date was after the ’243 patent’s publication date, and therefore it could not qualify as prior art under § 102(a) or § 102(b). Id. at 6-7. Open Text also provided evidence that both Piccard and the ’243 patent were owned by, and subject to an obligation of assignment to, the same entity—Webroot—at the time that the invention was made. In particular, Open Text argued that the application of § 103(c)(1) was straightforward, since the sole inventors of both Piccard and the ’243 patent were both employees of Webroot and both inventors executed assignments to Webroot. Id. at 7-8. As one potential explanation for Trend Micro’s inclusion of Piccard in the petition, while the assignment to Webroot was recorded shortly after the Piccard application was filed, the Piccard publication does not list Webroot as an assignee or applicant on its face.

Unsurprisingly, the PTAB concluded that Trend Micro had “fail[ed] to establish a reasonable likelihood of prevailing on its challenges to patentability because Patent Owner sufficiently establishe[d] . . . that Piccard is not prior art.” Id. at 8. The IPR was denied under 35 U.S.C. § 314(a) as a result. Id.

Takeaway: Petitioner’s should take care to ensure that the common ownership exception under § 102(b)(2)(C) does not apply to any of the references included in a petition.