Authorizing Reply and Sur-Reply CBM2014-00116

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Takeaway: The Board authorized a reply and sur-reply limited to responding to Patent Owner’s arguments based on the Supreme Court’s Alice decision made in the Patent Owner Preliminary Response, because the Alice decision was issued after the Petition was filed.

In its Order, the Board authorized a reply by Petitioner to the Patent Owner Preliminary Response limited to responding to Patent Owner’s arguments, based on the Alice decision, with respect to Petitioner’s asserted grounds of unpatentability. Patent Owner was also authorized a sur-reply. The Board authorized the reply, because in this case the Supreme Court’s Alice decision was issued after the Petition was filed, but before the Patent Owner Preliminary Response, such that Patent Owner was able to address the Alice decision and Petitioner was not. Continue reading

Final Written Decision IPR2013-00167

Finding All Challenged Claims (21-37) Unpatentable and Denying Motion to Amend

Takeaway: Assignor estoppel does not provide an exception to the statutory mandate under 35 U.S.C. § 311(a) that any person who is not the owner of a patent may file a petition for an inter partes review.

In its Final Written Decision, the Board determined that all of the challenged claims (21-37) of the ’723 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’723 Patent relates to injection molding machines in which at least one stationary platen includes a first mold half and at least one platen that is moveable toward the stationary platen includes a second mold half. Continue reading

Final Written Decision IPR2013-00128

Takeaway: In the case where Patent Owner files a non-contingent Motion to Amend requesting the cancellation of all of the challenged claims (i.e., the cancellation request is not contingent on the original claims being determined unpatentable) and the addition of new claims in their place, the Board may deny in part the Motion to Amend to the extent it seeks to add the substitute claims and grant in part the Motion to Amend to the extent it seeks to cancel the originally challenged claims.

In its Final Written Decision, the Board denied in part Patent Owner’s Motion to Amend, to the extent it sought to add substitute claims 9-12, and granted in part Patent Owner’s Motion to Amend, to the extent it sought to cancel claims 1-8.  The effect of the Board’s Final Written Decision was that all claims of the ’026 Patent were held to be unpatentable.  Also, the Board dismissed Patent Owner’s Motion to Exclude Evidence as moot, denied in part Petitioner’s Motion to Exclude Evidence with respect to Exhibits 2039 and 2040, and dismissed in part Petitioner’s Motion to Exclude Evidence as moot with respect to Exhibits 2029, 2030, 2032, 2033, 2035, 2036, and 2042. Continue reading

Guidance on Conferring with a Witness Between Cross-Examination and Re-Cross IPR2014-00116

Takeaway: The Board’s Testimony Guidelines on cross-examination do not prohibit counsel from conferring with the witness once cross-examination concludes, and before re-cross begins.

In its Order, the Board denied a request for a conference call regarding the Board’s Testimony Guidelines on when cross-examination of a witness “has concluded” to determine if counsel can suggest to the witness the manner in which any questions should be answered. The Board denied the request, because the question was moot since the deposition had concluded. Continue reading

Denying Institution of Covered Business Methods Review CBM2014-00067

Takeaway: The Board will not grant institution of CBM review of claims with means-plus-function limitations, where those limitations were not construed in the Petition.

In its Decision, the Board denied institution of covered business method patent review. Specifically, Petitioner challenged claims 1-28 of the ’022 Patent as unpatentable under 35 U.S.C. §§ 102, 103, and 112. The ’022 Patent relates to a method of ordering a translation of an electronic document, such as a web page or email, using a “one-click” or “single-click” translation component. Continue reading

Denying Institution of Inter Partes Review IPR2014-00384

Takeaway: The Board denied institution of inter partes review for reasons of administrative efficiency where the Petition presented at least 127 different grounds of unpatentability and failed to fully develop any of the grounds.

In its Decision, the Board denied institution of an inter partes review of the ’269 Patent. The ’269 Patent relates to methods of synthesizing nondestructive examination data to be used for training data analysts and/or testing inspective techniques. Continue reading

Denying Motion for Joinder IPR2014-00702

Takeaway: Even if two proceedings have nearly identical petitions, joinder will not be granted “as a matter of right.”

In its Decision, the Board denied Patent Owner’s Motion for Joinder with IPR2014-00057.  According to the Board, Patent Owner had not met its burden of demonstrating that joinder is warranted under the circumstances of this case.  Patent Owner had argued that if there are two proceedings with nearly identical petitions, joinder should be granted “as a matter of right.”  The Board disagreed, noting that joinder is not automatic under any circumstance, and that, instead, the Board had discretion regarding whether to join Patent Owner as a party to IPR2014-00057. Continue reading

Final Written Decision (FWD) IPR2013-00132, 00584

Takeaway: Where the proposed modification of a prior art reference would render it inoperable, the combination would not have been obvious to a person of ordinary skill in the art.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-5, 8-12, 14, 19, and 20 of the ‘360 patent are unpatentable. However, with respect to claims 6, 7, 13, 15-18, and 21 of the ‘360 patent, the Board found that Petitioner had not shown by a preponderance that they are unpatentable. Continue reading

Decision Denying Institution IPR2014-00382

Takeaway: A claim construction that is arguably at odds with the intrinsic evidence is not likely to be adopted by the Board and may be fatal to arguments relying upon such a construction.

In its Decision, the Board denied institution of inter partes review, holding that Petitioner had not established a reasonable likelihood that it would prevail with respect to any challenged claim in the ‘132 patent.  The ‘132 patent generally relates to “methods for preparing a composition for use in stabilizing chlorinated water to sunlight decomposition.”  In particular, the ‘132 patent addressed the inefficiencies and high cost associated with prior art methods of commercially producing such stabilizing compositions. Continue reading

Granting Motion for Additional Discovery IPR2014-00746

Takeaway: In order to discover additional documents regarding privity, the patent owner does not have to prove privity, but does have to show evidence tending to show beyond speculation that there could have been privity between petitioner and a third party.

In its Order, the Board granted Patent Owner’s Motion for Additional Discovery of an indemnification agreement between Petitioner and Comcast. The Board discussed the only issue in dispute – whether there exists more than a “mere possibility” or “mere allegation that something useful [to the proceeding] will be found,” which requires the party seeking discovery to already be in possession of evidence tending to show beyond speculation that in fact something favorable in substantive value to a contention of the movant will be discovered.  The Board noted that the existence of the indemnification agreement is not disputed; therefore, the question is whether Patent Owner has brought forth a threshold amount of evidence tending to show that the indemnification agreement supports the contention that Petitioner is controlled or could have exercised control in the prior litigation where Comcast was a defendant. Continue reading