Decision Denying Request for Rehearing IPR2014-00337

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Takeaway: A provisional application, by itself, does not constitute prior art under 35 U.S.C. § 102(e). Instead, only a patent or published application claiming the benefit of an earlier filing date (including the filing date of a provisional application) may qualify as prior art under 35 U.S.C. § 102(e).

In its Decision, the Board denied Petitioner’s Request for Rehearing. The Board maintained its position that a U.S. provisional application, by itself, does not constitute prior art under 35 U.S.C. § 102(e). Continue reading

Denying Institution of Inter Partes Review IPR2014-00529

Takeaway: An expert declaration supporting a petition must provide a fact-based analysis for the expert’s opinions. If it merely copies the wording of the petition, then the Board is likely to give it little or no weight.

In its Decision, the Board determined that Petitioner did not show there was a reasonable likelihood of establishing the unpatentability of the challenged claims (13-24 and 37-47) of the ’320 Patent, and therefore denied institution of inter partes review.  The ’320 Patent relates to control interfaces for integrated circuits (“ICs”) and other devices, and discloses a single wire serial interface that may be used to control stand-alone power ICs and other devices. Continue reading

Denying Motion for Leave to File Amended Petition CBM2014-00069, CBM2014-00070

Takeaway: If a petitioner accidentally neglects to include a challenge in its petition, then it is unlikely the Board will allow for the petition to be amended to include those grounds.

In its Order, the Board denied Petitioner’s Motion for Leave to File a Motion to Amend the Petition. Petitioner sought authorization to file a motion to include a review of dependent claims 2-11 of the ’901 Patent under 35 U.S.C. § 112, first paragraph, in CBM2014-00070.  Petitioner stated that it accidentally neglected to include the challenge originally, but did not provide any authority supporting its position that it should be allowed to add challenges to claims to the CBM review on a basis not presented in the Petition.  The Board stated that the Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based.” 35 U.S.C. § 322(a)(3).  Because Petitioner did not do so, the Board denied the Motion, but noted that Petitioner may file a separate petition on these grounds. Continue reading

Granting Motion to Submit Supplemental Information IPR2013-00540, 541, 544

Takeaway: A challenge to the public availability of a prior art reference should be asserted in a patent owner response while the admissibility of any evidence purportedly establishing the prior art reference’s public availability may be subject to a motion to exclude.

In its Decision, the Board granted Petitioner’s motion to submit supplemental information. The Board also allowed the parties additional briefing based on the supplemental information and reset Due Date 7 (Oral Hearing) to accommodate consideration of the supplemental information. Continue reading

Denying Request for Rehearing CBM2014-00084

Takeaway: Focusing on the language of the claims, a petition for CBM review must demonstrate that the claimed subject matter as a whole is not directed to a technological invention.

In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s denial to institute a covered business method patent review of the ’464 patent. The Board had denied institution of a CBM review because the Petitioner did not demonstrate that the claims of the ’464 patent qualified the patent as a covered business method patent. Continue reading

Decisions on Institution IPR2014-00535, 536, 537

Takeaway: A petitioner that wishes to institute review on several alternative grounds of unpatentability must explain how the various alternatives are distinguishable. Otherwise, the Board may exercise its discretion and institute on one of the grounds and deny the rest as duplicative.

In its Decisions on Institution, the Board instituted an inter partes review of claims 1-31 of the ’406 patent on grounds asserted in IPR2014-00535 (the ’535 petition), but denied institution on the grounds asserted in IPR2014-00536 (the ’536 petition) and IPR2014-00537 (the ’537 petition).  The ’406 patent “describes scanning circuit structures for scanners capable of reducing distortion during high-speed image signal transmission.” Continue reading

Granting Request to Submit Supplemental Information IPR2013-00534, 537

Takeaway: Where a party contests the authenticity of an exhibit, the Board may permit the other party to submit supplemental information authenticating the exhibit, even shortly before oral argument, if the objecting party is not unduly prejudiced.

In its Order, the Board granted Petitioner’s Request to File a Motion to Submit Supplemental Information pursuant to 37 C.F.R. § 42.123(b).  One of the major issues throughout the proceedings has been the authenticity of Exhibit 1002, which is an Internet posting of a purported press release. Continue reading

Final Written Decision IPR2013-00218

Takeaway: In applying the prior art to the challenged claims, the parties should take into account the knowledge of one of ordinary skill in the art, even when the instituted ground is one of anticipation.

In its Final Written Decision, the Board found that Petitioner had proven by a preponderance of the evidence that claims 1-5, 22, and 34 of the ’003 patent are unpatentable. The ’003 patent generally “describes generating and displaying stereoscopic panoramic images by using a rotating camera.” Continue reading

IPR2014-00672 Decision Denying Institution

IBM Corp. v. Intellectual Ventures II LLC

Takeaway: A petitioner must fully explain how every element of the claim is disclosed in the reference to succeed on a ground of unpatentability based on anticipation. A claim chart with citations to certain portions of the reference is not enough.

In its Decision, the Board found that Petitioner had not shown a reasonable likelihood that it would prevail as to the unpatentability of any of the challenged claims (1-11 and 13-21) of the ’409 Patent. Therefore, it denied the Petition. The ’409 Patent relates to methods, devices, and systems for controlling access to, and use, distribution, and secondary distribution of data.

The Board began with claim construction, noting that the claims are construed in the broadest reasonable interpretation in light of the specification. Although the parties proposed constructions for several terms, the Board determined that none of the disputed claim terms required an explicit construction, and that all remaining claim terms would be given their ordinary and customary meanings.

The Board then turned to the contention that claims 1-6, 8-11, 13, and 21 are anticipated by Cooper. The Board first found that Petitioner failed to “explain sufficiently how Cooper discloses rules defining access rights to the data, and how Cooper discloses rules defining access to the decrypted software object . . . is limited in accordance with the rules as enforced by the file management program . . . .” Further, the Board determined that the Petition did not explain sufficiently how Cooper’s general statement that the “file management system preferably prevents copying operations” discloses rules defining access rights to the data, and how Copper discloses each and every access to the decrypted software object is limited.

The Board next examined the contention that claims 1-6, 8-11, 13, and 21 are anticipated by Digibox, which described that DigiBox is a foundation technology within InterTrust Virtual Distribution Architecture. The Board agreed with Patent Owner that the Petition only addressed limited or controlled access to protected forms of the data, and did not explain how Digibox discloses limited or controlled access to unprotected forms of the protected data as enforced by an access mechanism, as required in claims 1 and 21.

Then, the Board reviewed the two separate contentions that claims 7 and 14-20, which depend from claim 1, are obvious over Digibox and Stefik and over Cooper and Stefik. The Board found that Stefik did not remedy the deficiencies of Digibox and Cooper with regard to the limitations of claim.

International Business Machines (IBM) Corp. v. Intellectual Ventures II LLC, IPR2014-00672
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: September 22, 2014
Patent: 6,314,409 B2
Before: Kristen L. Droesch, Jennifer S. Bisk, and Justin Busch
Written by: Droesch
Related Proceedings: IPR2014-00673; IPR2014-00719; IPR2014-00722; and CBM2014-00157

CBM2014-00012 Denying Motion for Leave to File a Motion to Stay Proceeding

Takeaway: The Board declined to authorize a motion to stay a proceeding while awaiting a Federal Circuit decision in a related CBM proceeding, because no compelling reason was provided.

In its Order, the Board denied Petitioner’s request to file a motion to stay the proceeding pending appeal to the Federal Circuit of the final decision in CBM2013-00014, which involves the same patent. The one-year period for rendering a final determination in this proceeding expires on March 25, 2015. Although the period can be extended by up to a six additional month for good cause, Petitioner recognized that a six-month extension may not be long enough for the Federal Circuit to render its decision.

The Board determined that this proceeding is in its final stages, with the last remaining substantive step, being the oral argument scheduled for October 28, 2014. Patent Owner had waived oral argument, so the Board determined that Petitioner could save cost by waiving oral argument. Thus, the Board found no compelling argument for a stay, because no significant time or cost would be saved.

Regions Fin. Corp. v. Retirement Capital Access Mgmt Co. LLC, CBM2014-00012
Paper 26: Order on Conduct of the Proceeding
Dated: September 22, 2014
Patent 6,625,582
Before: Glenn J. Perry, Thomas L. Giannetti, and Trenton A. Ward
Written by: Giannetti
Related Proceedings: CBM2013-00014