Monthly Archives: October 2014

Decision Denying Institution of Inter Partes Review IPR2014-00715

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Takeaway: When determining whether a non-party is a real party-in-interest, the Board considers the relationship between the petitioner and the non-party during the events that led to the filing of the petition, not just their relationship when the petition was filed.

In its Decision, the Board denied a Petition to institute inter partes review of claims 1-17 on the grounds that a non-party is a real party-in-interest, that the non-party was served with a complaint alleging infringement of the ’945 patent more than a year before the petition was filed, and that the Petition did not identify “all the real parties in interest” as required by 35 U.S.C. § 312(a). Continue reading →

Decision Declining Institution IPR2014-00628

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Takeaway:  In deciding whether to institute inter partes review, the Board may take into account whether the same or substantially the same prior art or arguments previously were presented to the Office, and reject the petition on that basis.

In its Decision, the Board denied the Petition as to each of challenged claims 1-23 of the ’155 patent.  The ’155 patent relates to a shampoo composition providing a combination of anti-dandruff efficacy and conditioning. Continue reading →

Denying Motion for Joinder and Denying Institution IPR2014-00950

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Takeaway: A motion for joinder will likely be denied when the same petitioner is merely including arguments regarding the same patent at issue that could have been included in the original petition.

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution of inter parties review as to the challenged claims (1, 4, 5, 8, 9, 11-15, 18, 19, 22, 23, and 25-28) of the ’145 Patent.  This is Petitioner’s Second Petition involving the same parties and same patent.  The first is instituted trial proceeding Reloaded Games, Inc. v. Parallel Networks LLC, IPR2014-00136 (“the ’136 proceeding”).  Petitioner concurrently filed the Motion for Joinder of the Second Petition with the ’136 proceeding. Continue reading →

Denying Institution of Inter Partes Review IPR2014-00630

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Takeaway: If a petitioner bases its invalidity positions on a claim construction that is not adopted by the Board, then the Board is likely to find that the petitioner did not meet its burden of showing a likelihood of success on unpatentability.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims (claims 1-6) of the ’424 Patent. Therefore, it denied institution of inter partes review.  The ’424 Patent relates to a cohesive product that has one or more layers of a substrate and a synthetic water-based cohesive polymer that is applied to the substrate and defines an outer surface of the product.  Specifically, the invention is directed to cohesive tapes and bandages that are made of a synthetic elastomer rather than a natural rubber latex. Continue reading →

Denying Request for Permission to File Motion to Stay Prosecution of Pending Continuation Application IPR2014-00511

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Takeaway: Under 37 C.F.R. § 42.73(d)(3)(i), a patent applicant or owner may not take any action that is inconsistent with the Board’s adverse judgment, including obtaining in any patent a claim that is not patentably distinct from a finally refused or canceled claim.

In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Stay Prosecution of pending U.S. Continuation Patent Application Serial Number 13/925,110.  According to the Board, it would be premature at the present time to bar Patent Owner from seeking the allowability of claims that may end up being patentably distinct from the claims under analysis in the instant proceeding. Continue reading →

Denying Request for Rehearing CBM2014-00082

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Takeaway: Disclaimer can only be found when the specification makes clear that the invention does not include a particular feature.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Decision to Institute covered business method review of claims 33-36, 39-41, 44, and 45 of the ‘960 patent.  According to the Board, Patent Owner had not sustained its burden of showing that the Board’s Decision should be modified. Continue reading →

Denying Request for Rehearing IPR2014-00599

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Takeaway: Information contained in exhibits or portions of exhibits, but not discussed in the Petition, is not incorporated into the Petition merely by the presence of such exhibits in the record.

In its Decision, the Board denied Petitioner’s Request for Rehearing.  According to the Board, Petitioner had not demonstrated that the Board’s Decision had misapprehended or overlooked matters raised in the Petition. Continue reading →

Denying Additional Discovery IPR2014-01257, 1260

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Takeaway: A party seeking additional discovery should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful – not merely relevant or admissible, but favorable in substantive value to a contention of the party moving for discovery – will be found.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion for additional discovery.  Patent Owner had wanted additional discovery in order to ascertain further details as to any relationship between Petitioner and a third party referred to as “Royal Cup.” Continue reading →

Denying Institution and Dismissing Motion for Joinder IPR2014-00581

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Takeaway:  When a petition for inter partes review in a first proceeding presents substantially the same prior art, and substantially the same arguments, as presented by the petition in another inter partes review proceeding, the Board may exercise its discretion to deny institution of review in the first proceeding under 35 U.S.C. § 325(d).

In its Decision, the Board denied the Petition for Inter Partes Review with respect to challenged dependent claims 5 and 10 of the ’565 patent, and dismissed as moot Petitioner’s unopposed Motion for Joinder with IPR2013-00539 (the ’539 IPR).  According to the Board, the Petition presented “substantially the same art and arguments” as presented by the Petition in the ’539 IPR. Continue reading →

Denying Motion to Seal IPR2014-00720

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Takeaway: Stating that making information public “could prejudice” the moving party or a third party is not enough to make the requisite showing in a motion to seal.

In its Order, the Board denied Petitioner’s Motion to Seal an exhibit to its Petition. The Board began by stating there is a strong public policy for making all information filed in an inter partes review open to the public, but noted that “confidential information” can be protected from disclosure.  “Confidential information” is defined as “trade secret or other confidential research, development, or commercial information.”  The moving party bears the burden of proof in showing it is entitled to the requested relief. Continue reading →