On April 11, 2014, in ABB Inc. v. Roy-G-Biv Corp., the Patent Trial and Appeal Board (PTAB) confirmed all claims of two patents in two separate inter partes reviews (Cases IPR2013-00062, IPR2013-00282, (PTAB Apr. 11, 2014); Cases IPR2013-00074, IPR2013-00286, (PTAB Apr. 11, 2014)).

ABB Inc. filed petitions for inter partes review of two of Roy-G-Biv's patents relating to motion control software. At the time it filed its petitions, ABB did not submit any supporting expert testimony. After the PTAB instituted trial on the two patents, Roy-G-Biv filed a Patent Owner Response in each proceeding, and submitted a supporting expert declaration that distinguished the prior art cited by ABB. In reply, for the first time in both proceedings, ABB presented two experts' declarations to rebut Roy-G-Biv's expert.

Roy-G-Biv's expert provided testimony identifying specific elements of the patents that were not present in the prior art references relied on by ABB. ABB's rebuttal expert declarations did not address these specific claim elements and did not include any testimony identifying where those elements could be found in the prior art. Instead, ABB's rebuttal experts addressed only secondary issues such as motivation to combine references and how a person of ordinary skill in the art would understand the teachings of the prior art. As a result, the PTAB determined that ABB's experts failed to discredit Roy-G-Biv's expert's testimony and that ABB ultimately failed to carry its burden of proof that the challenged claims were obvious.

These decisions appear to be the first PTAB decisions where all of the challenged patent claims were confirmed, and serve as useful guidepost for patent owners and challengers alike. The PTAB's decisions establish that it is possible for a patent to survive inter partes review, particularly if the patent owner presents clear evidence distinguishing its claims from the prior art. Patent challengers, on the other hand, should make sure that any rebuttal expert testimony addresses all evidence presented by the patent owner. In the absence of adequate rebuttal evidence, a patent challenger may not be able to meet its burden of showing unpatentability.