Order on Motions to Seal and for Entry of Protective Order IPR2014-00309

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Takeaway: A party may file a motion to seal such that the information at issue will be sealed pending the outcome of the motion; however, only “confidential information” is protected from disclosure.

In its Order, the Board denied Patent Owner’s request for entry of a non-standard Protective Order and, instead, entered the Board’s default Protective Order.  The Board also denied Patent Owner’s request to file a Motion to Strike Patent Owner’s unredacted response/exhibits for lack of service. Continue reading

Denying Request to Redact Oral Hearing Transcript IPR2013-00292, 293, 294, 295

Takeaway: The default standard in an inter partes review is that all papers filed in the proceeding are open and available for access by the public.

In its Order, the Board denied Patent Owner’s request to redact the oral hearing transcript.  Patent Owner desired to antedate certain prior art by proving an earlier conception plus due diligence up to a subsequent constructive reduction to practice.  The issue in question was discussed during an oral hearing which was open to the public. Continue reading

Denying Rehearing Request IPR2014-00258

Takeaway: The Board has discretion in how much weight to afford expert testimony, and a Board’s determination that expert testimony regarding obviousness rationales is conclusory and unsupported may be difficult to address in a request for rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of inter partes review of the ’462 patent.  Petitioner asserted six grounds of unpatentability under Sections 102 and 103 in its Petition, and the Board denied each one. Continue reading

Granting Motion for Leave to File Motion for Extension of Time IPR2014-00148

Takeaway: If opposing a motion to deem a late filing as timely, the opposing party should focus on any actual prejudice caused by the delay given the fact that the parties are able to stipulate extensions in time for due dates 1-5.

In its Order, the Board authorized Patent Owner to file a motion to deem the late filing of the Patent Owner Response as timely. The parties had previously stipulated that the Patent Owner’s Response was due by August 18, 2014, and Patent Owner submitted the Response on August 19, 2104.  The parties therefore sought guidance on addressing the timeliness of the Response. Continue reading

Denying Request for Rehearing of Decision to Institute Review IPR2014-00383

Takeaway: A rehearing request of a decision instituting review will not be persuasive unless the patent owner can show that there was an abuse of discretion, or that the Board misapprehended or overlooked any material matter.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s decision instituting inter partes review of claim 1-29 of the ’318 Patent. Patent Owner asserted that the Board abused its discretion because its adopted claim construction read a limitation out of the claims, overlooked explicit associations between elements of the claims, was inconsistent with the specification, and would render the claims incapable of filtering content. Patent Owner also asserted the Board incorrectly analyzed obviousness. Continue reading

Denying Motion for Additional Discovery IPR2014-00245

Takeaway: In requesting additional discovery, the moving party must provide a threshold amount of evidence related to what is sought to establish that there is more than a mere possibility that the request would uncover something useful.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery pertaining to its assertion of objective indications of non-obviousness. Continue reading

Granting Authorization to File Motion for Additional Discovery IPR2013-00576

Takeaway: The Board will apply a “necessary in the interest of justice” standard in deciding whether to grant a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2). Also, the Board authorized Petitioner to file an opposition as well as a motion to expunge for the purpose of replacing certain exhibits. Continue reading

Final Written Decision CBM2013-00014

Takeaway: A specification that discloses only one embodiment may not limit claim terms to that embodiment but may serve to limit means-plus-function limitations. However, if the disclosed structure is nothing more than a general purpose computer, limiting the claim terms to that structure may not save the claims from a patent eligibility challenge under Section 101.

In its Final Written Decision, the Board found that all of the challenged claims of the ‘582 patent are unpatentable under 35 U.S.C. § 101.  The ‘582 patent “relates to a method for enabling recipients of Social Security payments to convert a designated portion of future payments into currently available financial resources.” Continue reading

Final Written Decision IPR2013-00159

Challenged claims unpatentable and motion to amend denied

Takeaway: Where there are a finite number of predictable solutions and the subject matter of a substitute claim is not the product of innovation, but of ordinary skill and common sense, the claim may be found to have been obvious in light of the prior art.

In its Final Written Decision, the Board found that all challenged claims (1-9, 13, 14, 16, and 19-21) of the ’183 Patent are unpatentable, denied Patent Owner’s Motion to Amend, and granted-in-part and denied-in-part Patent Owner’s Motion to Exclude Evidence. The ’183 Patent relates to self-propelled apparatus for cleaning a submerged surface of a pool or tank and methods for controlling such apparatus. Continue reading

Order Regarding Petition Filing Date IPR2014-00367

Takeaway: In order to be accorded a filing date, a petition must include affidavits or declarations of supporting evidence and opinions as required by 35 U.S.C. § 312(a)(3)(B).

In its Order, the Board accorded the Petition a filing date of January 21, 2014. Also, the Board authorized Petitioner to file a motion requesting that the Petition be accorded an earlier filing date of January 18, 2014, and authorized Patent Owner to file an opposition to any such motion. Continue reading