Granting Motion for Live Testimony at Hearing IPR2013-00203


Takeaway: The Board may grant a request for live testimony by the sole inventor as a fact witness on the issue of antedating the only references relied on by a petitioner because the testimony would likely be dispositive.

In its Order, the Board granted Patent Owner’s request for live testimony from its named inventor at the final oral argument. Only under very limited circumstances will cross-examination of witnesses be ordered to take place in the presence of an administrative patent judge. See Office Trial Practice Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012). For example, the Board may occasionally require live testimony where the Board considers the demeanor of a witness critical to assessing credibility. Id. Factors to consider when determining the importance of the witness’s live testimony include (1) whether the testimony may be case-dispositive, and (2) whether the witness is a fact witness, because the credibility of such a witness depends on demeanor. Continue reading

Decision Denying Institution of Inter Partes Review IPR2014-00099


Takeaway: A petition should provide an element-by-element analysis for each of the claims with respect to each prior art reference, including a claim chart.

In its Decision, the Board denied institution of an inter partes review because the information in the Petition did not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim.  The ’044 Patent relates to automated trading systems for option contracts.  Specifically, the claimed invention is directed to methods for managing the risk of a maker of an options market in an automated trading system.  Petitioner asserted both 35 U.S.C. § 102(e) and § 103(a) as grounds of unpatentability. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00071


Takeaway: Failure to support unpatentability grounds with expert testimony filed with the petition cannot be corrected through later-filed expert declarations.

In its Final Written Decision, the Board found that Petitioners had not shown by a preponderance of the evidence that challenged claims 6 and 9 of the ‘930 patent are unpatentable. Continue reading

Decision Denying Institution of Covered Business Method Patent Review CBM2014-00032


Takeaway: The mere assertion of a patent in district court against a bank or other financial institution is not sufficient by itself to transform a patent into a “covered business method patent.” The petitioner must still provide evidence from the specification that at least one claim of the patent is to a “covered business method.”

In its Decision, the Board denied institution of a covered business method patent review of claims 1-16 of the ’298 Patent because Petitioners failed to meet the jurisdictional requirements of Section 18 of the American Invents Act. The ’298 Patent relates to methods and apparatus for identifying and characterizing errant electronic files stored on computer storage devices. Continue reading

Denying Request for Rehearing of Denial of Institution IPR2013-000491


Takeaway: The petition should include adequate evidence to supports its conclusion, and should anticipate differing positions. A request for rehearing is not appropriate for the addition of new evidence or arguments.

In its Decision, the Board denied Petitioner’s request for rehearing of the denial of institution of review of challenged claims 1-3, 5-10, and 12-15 of U.S. Patent No. 8,474,183 (“the ’183 Patent”). Petitioner only requested rehearing on the denial of review of claim 8 and the claims dependent thereon contending that the claim construction was erroneous. Continue reading

Denying Patent Owner’s Motions to Seal and Granting Petitioner’s Motion to Seal IPR2013-00453


Takeaway: Motions to seal must be filed by the party whose confidential information is being sought to be protected, regardless of which party produced or filed the particular paper to be sealed.

In its Decision, the Board decided a number of motions by Petitioner and Patent Owner. In particular, the Board denied Patent Owner’s Motion to Seal and granted Petitioner’s Motions to Seal and Expunge. Continue reading

Holding Terminal Disclaimer in Abeyance Pending Outcome of the Proceeding IPR2013-00242


Takeaway: The Board can hold the filing of a terminal disclaimer in abeyance pending the outcome of the proceeding to avoid switching the claim interpretation standard of the proceeding, and may choose to do so when the patent owner waits until after all substantive briefing is completed and the evidentiary record is closed to file the terminal disclaimer.

In its Order, the Board ordered that the terminal disclaimer filed by Patent Owner as to the patent at issue be held in abeyance until the instant proceeding terminates or a final written decision is issued, and that the challenged claims will continue to be given their broadest reasonable interpretation in light of the patent. Continue reading

Final Written Decision IPR2013-00086


Takeaway: Expert testimony (in the form of declarations, for example) is particularly important when issues such as obviousness and whether a document was publicly available before the critical date of the challenged patent are before the Board.

In its Final Written Decision, the Board held that the only claim at issue in this matter, namely, claim 30 of the ‘662 patent, to be unpatentable under 35 U.S.C. § 103(a). According to the Board, this claim would have been obvious in view of the Kantor and Satyanarayanan references, viewed in combination.  A single oral argument was conducted for this proceeding and five other related inter partes proceedings. Continue reading

Decision on Petitioner’s Request for Rehearing IPR2014-00116


Takeaway: In a decision on a request for rehearing, the Board indicated that while it is bound by precedential case law, it is not necessarily bound by the USPTO Manual of Patent Examining Procedure (M.P.E.P.).

In its Decision, the Board considered a Request for Rehearing that had been filed by Patent Owner in response to the Board’s earlier Decision instituting inter partes review of claims 1-12, 14-24, and 26-30 of the ‘745 patent.  A primary focus of the Board’s analysis was whether the ‘745 patent was entitled to claim priority to an earlier ‘306 provisional application. Continue reading

Request for Rehearing Results in Board Modifying Previous Order to Deny Further Grounds IPR2014-00003


Takeaway: A request for rehearing by Petitioner to increase the number of instituted claims based on a particular ground of unpatentability may instead, in some circumstances, result in a reduction in the number of claims instituted based on that particular ground.

In its Decision, the Board modified a previous Order in its Decision instituting inter partes review.  This was in response to a Request for Rehearing filed by Petitioner.

The original Petition challenged claims 1-94 of the ‘351 patent, after which Patent Owner filed its Patent Owner Preliminary Response.  The parties then filed a Joint Motion, which the Board ultimately granted, to limit the Petition to claims 1-6, 9, 12-13, 19-29, 32, 35-36, and 42-46. Continue reading