In its Order, the Board denied Petitioner’s request for a rehearing of the Board’s decision not to institute an inter partes review as to those challenges to claims of the ’992 Patent based on the Leshkivich and Bigi references. Because the challenged claims of the ‘992 Patent were entitled to the benefit of the filing date of PCT Application No. WO 97/09286 (“Pugh”), the Bigi reference was not available as prior art against the challenged claims. Continue reading
Monthly Archives: April 2014
Decision Denying Petitioner’s Request for Rehearing on Institution IPR2013-00593
In its Order, the Board denied Petitioner’s Request for a Partial Rehearing of the Board’s Decision Instituting Inter Partes Review of claims 9, 10, 13, and 14 of the ’952 Patent. Specifically, Petitioner requested rehearing of the Board’s denial to institute review of claim 13 as being unpatentable under 35 U.S.C. § 103 as obvious over Wolff. The Board noted that a party requesting rehearing bears the burden to show that the decision should be modified. Continue reading
Denying Motion for Leave to file Motion to Strike IPR2013-00213
In its Order, the Board denied Patent Owner’s Motion for Leave to File a Motion to Strike Petitioner’s Reply and the declaration submitted with the Reply. Patent Owner first argued that the Reply improperly made new arguments and relied on the prior art in a manner different from how Petitioner relied upon that prior art in the Petition. Petitioner argued that the Reply properly responded to the Patent Owner’s Response and the accompanying declaration. The Board stated that it did not believe a motion to strike was warranted under the circumstances because in the absence of special circumstances, the Board will decide whether a Reply and its supporting evidence is proper when preparing the final written decision. Continue reading
Order on Conduct of the Proceeding re Claim Construction IPR2013-00483
In its Order, the Board requested the parties’ input on whether the broadest reasonable interpretation standard still applies to the final written decision where the ’917 Patent expired subsequent to the institution of trial. The Board, citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012), stated that it does not believe that the broadest reasonable construction rule should apply to the final written decision. The Board noted that the same patent is involved in IPR2013-00638, and that because that proceeding was instituted after expiration of the patent, the Board declined to use the rule of broadest reasonable construction. Continue reading
Granting Sua Sponte Motion for Additional Briefing re Terminal Disclaimer IPR2013-00242
Takeaway: On issues of first impression, the Board may request briefing from the parties sua sponte.
In its Order, the Board sua sponte ordered briefing regarding the effect of Patent Owner filing a terminal disclaimer of the remaining term of the ’076 Patent. Patent Owner stated that there was a dispute between the parties as to whether the ’076 Patent expires in 2014 or 2017, and that the expiration affects whether the claims are given their broadest reasonable interpretation (unexpired patent) or are interpreted similar to that of a district court (expired patent) in this proceeding. Patent Owner then filed a terminal disclaimer and requested authorization to file a motion to terminate the proceeding on the basis that the Board applied the broadest reasonable interpretation standard in the decision to institute the inter partes review. Petitioner opposed the requests stating that Patent Owner improperly delayed raising this issue until all substantive briefing was completed and should have raised it in its Response. Petitioner also disputed that there was ever a disagreement regarding the expiration date of the ’076 Patent. Continue reading
Decision Denying Petitioner’s Request for Rehearing on Institution IPR2013-00593
In its Order, the Board denied Petitioner’s Request for a Partial Rehearing of the Board’s Decision Instituting an Inter Partes Review of claims 9, 10, 13, and 14 of the ’952 Patent. Specifically, Petitioner requested rehearing of the Board’s denial to institute review of claim 13 as being unpatentable under 35 U.S.C. § 103 as obvious over Wolff. The Board noted that a party requesting rehearing bears the burden to show that the decision should be modified. Petitioner argued that the proposed ground of unpatentability was not redundant to the ground of unpatentability under 35 U.S.C. § 103 over Berman based upon the fact that as to claims 9, 10, and 14, the Board instituted trial as anticipated by Berman and as anticipated by Wolff. The Board disagreed with Petitioner’s argument. Noting that the rules must be “construed to secure the just, speedy, and inexpensive resolution of every proceeding,” and citing to CBM2014-00003, the Board stated that grounds that are redundant in manner and where petitioner makes no meaningful distinction between them are not all entitled to consideration. The Board then stated that here, Petitioner did not demonstrate any meaningful distinction between the obviousness grounds asserted based on Berman and Wolff. Continue reading
Denying Authorization for Motion to Stay Inter Partes Reexam CBM2014-00114
In its Order, the Board denied Petitioner’s request for authorization to file a motion to stay the co-pending inter partes reexamination involving the same patent challenged in the proceeding, U.S. Patent No. 7,024,387 (“the ‘387 patent”). The Board held that any request to stay the co-pending reexamination based on the CBM proceeding was premature at such an early stage of the CBM proceeding. The Board had not yet even determined whether to institute the CBM review. The Board stated that Petitioner may renew its request for authorization to file a motion to stay the reexamination if a CBM review of the ‘387 patent is eventually instituted. Continue reading
Order Regarding Motion to Seal IPR2013-00340
In the Order, the Board requested additional briefing on what information should be protected under seal. Petitioner and Patent Owner continued to dispute over what could be redacted in certain confidential documents when submitting them into the record. The Parties agreed to submit two “non-public” versions, i.e. a redacted version and a non-redacted version. In the redacted documents, the non-redacted portion would constitute information that the Patent Owner “needs” to make its case. Petitioner wanted both versions to remain under seal and intended to file a motion to expunge both versions at the end of the trial, except any version that the Board relied upon in a final written decision. Continue reading
Decision Denying Institution IPR2014-00077
In its Order, the Board denied institution of the Petition for Inter Partes Review. The ’798 Patent is directed to technology that allows a user to communicate verbally with a computer in the same manner that he or she would communicate naturally with another person. Apple relied upon six prior art references and asserted that various claims of the ’798 Patent were unpatentable as anticipated by five of the six references and that various claims of the ’798 Patent were rendered obvious by various combinations of the references. Continue reading
Order Denying Motion for Leave to File Motion to Correct Clerical Error IPR2013-00335
In its Order, the Board denied Petitioner’s Request for Leave to File a Motion to replace Petitioner’s Reply Brief with an amended Reply Brief correcting clerical errors. Petitioner wanted to insert pin point citations that it stated were inadvertently omitted from the Reply Brief and were present in the accompanying declaration. Patent Owner opposed the request stating that these changes would constitute substantive alteration of the Reply after its due date and would be prejudicial to Patent Owner. The Board agreed with the Patent Owner. Continue reading