Final Written Decision IPR2013-00312

all claims in the trial were found unpatentable

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Takeaway: Statements that are unsupported by evidence or a showing of facts essentially amount to mere pleadings, and therefore cannot be relied upon to antedate an applied reference.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 of the ‘836 patent are unpatentable.  In particular, the Board found that claims 1, 2, 12, 13, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 102(e) as anticipated by Dezonno; that claims 1, 2, 8, 12, 13, 15, 16, 19, 22, 23, 26, 29, and 30 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno; and that claim 22 and 29 are unpatentable under 35 U.S.C. § 103(a) as having been obvious in view of Dezonno taken in combination with the Mosaic Handbook. Continue reading

Denying Leave to File Supplemental Information IPR2014-01113

Takeaway: A request to file supplemental information, such as inventor’s testimony in a related proceeding regarding claim construction, was not granted because what the inventor believes the claim terms mean is mostly irrelevant in claim construction in inter partes review proceedings.

In its Order, the Board denied Petitioner’s request to file supplemental information. Following the Patent Owner Preliminary Response, Petitioner requested to file deposition excerpts, from related district court litigation, of one of Patent Owner’s named inventors in the ’028 patent.  Petitioner argued that the testimony included meanings of certain claim terms that were inconsistent with the meanings taken by Patent Owner in its Preliminary Response.

Continue reading

Denying Motion to Correct Clerical Mistake IPR2014-00833

Takeaway: Even in situations where a motion to correct a clerical mistake in a petition is unopposed, the motion must still set forth a full statement of the reasons why the petitioner is entitled to the relief requested.

In its Decision, the Board denied Petitioner’s unopposed Motion to Correct a Clerical Mistake in the Petition without prejudice. The Petition referred to Exhibit 1007 as Publication No. 2002/0000916 A1, but the filed Exhibit 1007 was a copy of the issued patent corresponding to the referenced publication. Continue reading

Denying Motion for Request to Stay the Proceeding CBM2014-00176

Takeaway: In determining whether to waive the three-month time limit for filing Patent Owner’s preliminary response, the Board will consider the impact of the resultant delay on the goal of completing proceedings in a manner that is just, speedy, and inexpensive.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion for a stay of the deadline to file a Preliminary Response. Patent Owner’s bases for requesting such authorization related both to another proceeding (CBM2014-00008) involving the same ’807 patent and the same parties, and recent Supreme Court opinions in the cases of Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) and Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Continue reading

Final Written Decision IPR2013-00266

Takeaway: The burden is on the patent owner in a motion to amend to show nonobviousness, not on the petitioner to show obviousness.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend to the extent it requested cancellation of claims 1, 2, 4, 11, 12, 17, 18, and 19 of the ’346 Patent, denied Patent Owner’s Motion to Amend to the extent it requested entry of substitute claims 20-26, and dismissed as moot both parties’ Motions to Exclude Evidence. The ’346 Patent relates to DNA sequencing using nucleotides that are labeled and blocked. Continue reading

Final Written Decision IPR2014-00276

all claims remain patentable

Takeaway: A petitioner’s proposed ground of obviousness must include sufficient explanation including articulated reasoning with some rational underpinning to support a legal conclusion of obviousness.

In its Final Written Decision, the Board found that Petitioner had failed to prove, by a preponderance of the evidence, that claims 1-18 of the ’430 patent are unpatentable.  Also, the Board denied Patent Owner’s Motion to Exclude. Continue reading

Denying Rehearing of Desicion not to Institute IPR2014-00514

Takeaway: If information relating to a presentation at one or more meetings is alleged to constitute a prior art publication, Petitioner must allege, and provide supporting evidence sufficient to show, that the relied-upon information was distributed “without restriction” to at least some of the attendees.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying Institution of inter partes review of claims of the ’580 patent.  At issue was the Board’s conclusion in its Decision that certain materials alleged by Petitioner to be prior art were not sufficiently made available to the public. Continue reading

Final Written Decision IPR2013-00290

Takeaway: In a motion to amend, it is not the petitioner’s burden to prove that the proposed claims are anticipated by or rendered obvious by the prior art.  Instead, it is the patent owner’s burden to show persuasive evidence that the proposed claims are not anticipated by or rendered obvious by the prior art.

In its Final Written Decision, the Board found that claims 1, 4-16, 18, and 20-22 of the ’536 are unpatenable, Petitioner had not shown that claims 2, 3, 17, or 19 are unpatentable, and denied Patent Owner’s Motion to Amend and Motion to Exclude. The ’536 Patent relates to injection molding machines that inject, under pressure, injectable molding material into a mold cavity. Continue reading

Order re Oral Hearing IPR2014-00041, 43, 51, 54, 55

Takeaway: The Board may postpone the date of the oral hearing to decide motions to seal to determine which documents are part of the public record.

In its Order, the Board postponed the date for the oral hearing in the proceedings and authorized Petitioner’s request to file a Sur-reply in response to Patent Owner’s Reply in support of Patent Owner’s Motion relating to real parties-in-interest. Continue reading

Final Written Decision IPR2013-00337

Takeaway: When considering a claim term’s broadest reasonable construction, that the specification does not exclude a particular embodiment does not mean that the embodiment is necessarily included.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims of the ‘913 patent are unpatentable. Also, the Board dismissed Petitioner’s Motion to Exclude. Continue reading