Final Written Decision IPR2013-00358

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Takeaway: The Board found that the relevant time period for resolving the level of ordinary skill in the art when conducting an obviousness determination was the earliest filing date to which the patent claims at issue were entitled.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that any of challenged claims 1, 13, or 25 of the ‘561 patent were unpatentable.  In particular, the Board found that Petitioner had not shown that the subject matter of claims 1 and 25 was unpatentable under 35 U.S.C. § 103 over Angros and Picken; or that the subject matter of claim 13 was unpatentable under 35 U.S.C. § 103 over Angros, Picken, and Baumann.  Further, the Board dismissed Petitioner’s Motion to Exclude and also dismissed Petitioner’s and Patent Owner’s objections to each other’s demonstrative exhibits to be used at the oral hearing. Continue reading

Order Regarding Request to Expunge CBM2014-00025

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In its Order, the Board addressed the situation where Petitioner had submitted the Declaration of its expert Dr. Sandra Newton in support of the Petition, but thereafter decided that it did not want to rely on the Declaration.  The reason for this decision was that the Board had instituted covered business method (CBM) review in this proceeding based solely on the asserted ground that the challenged claims were indefinite, whereas the Declaration of Dr. Newton did not expressly opine on indefiniteness.  In view of this decision, Petitioner withdrew its offer to make Dr. Newton available for cross-examination. Continue reading

Decision on Institution of CBM Review CBM2014-00070

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Takeaway: In a Covered Business Method Patent Review, if the Board decides to institute review based on claim’s indefiniteness, it may not institute review of that claim based on prior art because the claim’s scope cannot be determined.

In its Decision, the Board instituted a CBM Review of some of the challenged claims of the ‘901 patent. Petitioner had challenged claims 1-33 of the ‘901 patent, and the Board found that Petitioner had demonstrated “that it is more likely than not that the challenged claims 1 and 12-33 are unpatentable,” and instituted review with respect to those claims. Continue reading

Decision on Motion to Stay CBM2014-00060

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Takeaway: The Board may deny a motion to stay if there is not significant overlap between the issues in the proceeding for which a stay is being sought and those in the other proceeding.

In its Decision, the Board denied Patent Owner’s Motion to Stay Reexamination Control No. 95/002,372 (“the Reexamination”) involving the subject ‘022 patent.  Patent Owner had moved to stay the Reexamination, and Petitioner had opposed. Continue reading

Denying Institution of Inter Partes Review IPR2014-00700

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Takeaway: The Board is not likely to treat a statement by the examiner during prosecution as an admission by Patent Owner.

In its Decision, the Board declined to institute inter partes review of any challenged claim of the ‘453 patent.  In particular, the Petition was denied because the Board determined there was not a reasonable likelihood that Petitioner would prevail on any of the asserted grounds of unpatentability raised with respect to claims 30 and 33. Continue reading

Order Regarding Routine Discovery IPR2013-00576

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Takeaway: Cross-examination of a witness regarding his or her declaration will not be permitted as routine discovery if the declaration was not prepared for purposes of the proceeding in question.

In its Order, the Board ordered that cross-examination of witnesses providing testimony or statements in the Declaration of Dr. Takashi Shibanuma, the Second Declaration of Mr. Robert E. Low, and the Certification of Mr. Donald W. Hanley would not be provided as routine discovery under 37 C.F.R. § 42.51(b)(1)(ii).  The Board also ordered Patent Owner to request a conference call with the Board by a certain date if Patent Owner intended to seek authorization to file a motion for additional discovery in connection with any of these three exhibits. Continue reading

Order Regarding Motion to Seal IPR2014-00097, 98

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Takeaway: The burden to show good cause to seal an exhibit is on the party asserting that the exhibit contains confidential information.

In its Order for each of the proceedings, the Board authorized Petitioner to file a motion to seal Exhibit 2014 (“the Exhibit”) and Patent Owner’s Response, authorized Patent Owner to file an opposition by September 2, 2014, and did not authorize Petitioner to file any reply.  In each of the proceedings, the Board denied Patent Owner’s motion to seal and ordered that the Exhibit and Patent Owner’s Response shall remain provisionally sealed until disposition of Petitioner’s motion. Continue reading

Denying Request for Additional Pages CBM2013-00052, 53, 54

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Takeaway: The Board may deny a party’s request for additional pages to complete that party’s replies if a showing of extraordinary circumstances has not been made.

In its Order, the Board declined Petitioner’s request for authorization to file a motion for waiver with respect to page limits set for Petitioner’s Replies to Patent Owner’s Responses.  The proposed motion for waiver was pursuant to 37 C.F.R. § 42.5(b) in regard to the page limits set by 37 C.F.R. § 42.24(c)(1). Continue reading

Decision Denying Institution IPR2014-00422

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Takeaway: If an asserted prior art reference does not disclose a lower limit of a recited particle size range, and the lower limit is deemed to be an important aspect of the claimed invention, then the Board may conclude that the reference does not describe the claimed range with sufficient specificity to support a finding of anticipation.

In its Decision, the Board declined to institute inter partes review of claims 1-2, 14-20, 22-27, and 29 of the ‘185 patent.  Petitioner had filed a Petition challenging these claims, in reply to which Patent Owner had filed a Preliminary Response. Continue reading

Granting Request to File Exhibit IPR2014-00685

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Takeaway:  A party will likely be granted leave to correct an error of not including an exhibit if it is clear from the papers or other exhibits that the missing exhibit was intended to be filed.

In its Order, the Board granted Petitioner’s request to correct a filing error.  Petitioner filed the declaration of its expert without including his curriculum vitae, despite indicating that it was attached.  Patent Owner opposed the request because it already filed its Preliminary Response, in which it challenged the declaration under Federal Rule of Evidence 702.  The Board found that Patent Owner could have asked Petitioner for a copy of the curriculum vitae because it was obvious from the declaration that Petitioner intended to submit it. Further, if inter partes review is instituted, Patent Owner will have the right to file a response in which it can address any perceived deficiencies of the declaration. Continue reading