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The PTAB recently affirmed their earlier denial to institute an
Inter Partes Review (IPR) because the original Petition did not
sufficiently prove that hotels provide coffee makers in hotel
rooms. In Hamilton Beach v. Courtesy Products, Case
IPR2014- 01260, September 2, 2015 (Motion for Reconsideration
denied), Hamilton Beach filed a Motion for Reconsideration of an
earlier decision to deny institution of the IPR. Specifically,
Courtesy Products owns a patent related to single-serving coffee
makers provided within a hotel or "lodging
establishment." The Board denied the first Petition because
Hamilton Beach cited only "relevant hospitality
regulations" or expert declarations for disclosure of the
lodging establishment limitations, and had not sufficiently
explained the expert declaration cites in the petition.
Some of the challenged claims require the "lodging
establishment" limitations in the preamble, while others
include such limitations in the body of the claim. For the preamble
limitations, Hamilton Beach originally argued that such limitations
are presumed limiting. In the Motion to Reconsider, however,
Hamilton Beach argued "the preamble is of no significance
because it cannot be said to constitute or explain a claim
limitation." The Board found this argument to be the opposite
of the original Petition, and declined to revisit their earlier
decision in light of new arguments raised for the first time in the
Motion.
The Petition also argued the lodging establishment limitations
would have been obvious "because these actions are inherent to
an in-room beverage service," and even cited expert
declaration paragraphs for support. However, these citations were
not sufficiently explained, and were merely cited without further
elucidation. The Board therefore concluded that the citations were
"improper incorporations by reference of arguments made in the
declarations that circumvented page limits that apply to
petitions."
Hamilton Beach also pointed to the prosecution history of the
patents at issue to show that hotels historically provide coffee
makers in rooms. The PTAB rejected this argument, finding it to be
absent in the original Petition and disconnected from the prior art
cited by Hamilton Beach.
Takeaway
This decision highlights the importance of not only making the
right arguments, but where such arguments are made. The original
Petition included citations to what should be a relatively obvious
concept – that hotels provide in-room coffee makers. But such
arguments were made in the expert declarations and merely cited in
the Petition without any explanation. The arguments themselves, no
matter how obvious they may seem, must be made in the Petition to
avoid the Board scrutinizing petitioners for circumventing page
limits.
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