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
Monthly Archives: July 2014
Final Written Decision IPR2013-00167
Finding All Challenged Claims (21-37) Unpatentable and Denying Motion to Amend
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
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
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
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
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
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
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
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