Denying Rehearing Request IPR2013-00194

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Takeaway: A request for rehearing may not include new arguments but should only include arguments that were previously presented and were either overlooked or misapprehended by the Board.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1-8 and 10-12 of the ‘492 patent unpatentable. Patent Owner asserted in its Request that, among others: the Board’s claim construction and analysis of the prior art were incorrect; that the proceedings are unconstitutional, and that counsel for Petitioner and its expert fraudulently misled the PTAB. Continue reading

Decision Denying Institution IPR2014-00852

Takeaway: If a petitioner relies upon information from the challenged patent to support its obviousness contentions, the petitioner must establish that such information would have been known by a person of ordinary skill in the art and not just by the inventors.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘134 patent relates to “a hybrid vehicle with an internal combustion engine, a traction motor, a starter motor, and a battery bank, all controlled by a microprocessor.” Continue reading

Decision Denying Institution IPR2014-00776

Takeaway: A petitioner must support an alleged ground of obviousness by some articulated reasoning with some underpinning.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘054 patent related to “an adsorption drying apparatus [and] an adsorption drying method . . . for drying compressed gases.”  Petitioner relied upon four prior art references – Jonsson, Vertriest, White, and Dunne – as well as the declaration of Dr. Ritter. Continue reading

Final Written Decision IPR2013-00309

Takeaway: The Board may consider a demand letter by patent owner in construing terms of the patent.

In its Final Written Decision, the Board found that claims 1-12, 14, and 15 of the ’381 Patent are unpatentable, but that Petitioner did not demonstrate by a preponderance of the evidence that claim 13 of the ’381 Patent is unpatentable. The ’381 Patent relates to a virtual copier (“VC”) system that enables a personal computer user to scan paper from a first device and copy an electronic version of it to another remote device or integrate that electronic version with a separate computer application in the network. Continue reading

Denying Authorization to File a Revised Motion to Amend IPR2014-00245

Takeaway: An additional motion to amend may be authorized by the Board only when there is a good cause showing or a joint request of the petitioner and the patent owner to materially advance a settlement.

In its Order, the Board denied Patent Owner’s request for authorization to file a revised motion to amend. Also, the Board authorized Patent Owner to file a supplemental paper addressing a proposed substitute claim. Continue reading

Denying Motion to Seal and Joint Motion for Protective Order IPR2014-00377; IPR2014-00378; IPR2014-00379

Takeaway: If the parties wish to impose restrictions on confidential information beyond those in the Default Protective Order, they must show good cause for such restrictions, even if the parties stipulate to the restrictions.

In its Decision, the Board denied without prejudice Patent Owner’s Motion to Seal and a Joint Motion for Entry of a Stipulated Protective Order. The parties filed the Joint Motion attaching the proposed Stipulated Protective Order, and Patent Owner filed a Motion to Seal under the proposed Protective Order.  The parties agreed to modify the Default Protective Order to add a number of heightened categories of confidential information, but the Board found that the categories were not clearly defined and did not explain any differences between certain designations, including any distinction in terms of who may access any particular category of documents. Continue reading

Denying Motion to Submit New Testimonial Evidence IPR2014-01365

Takeaway: Testimony evidence is not permitted to be submitted with the patent owner preliminary response, but the Board does have discretion to permit such evidence, if it is in the interests of justice.

In its Order, the Board denied Patent Owner’s request to file the deposition testimony of an expert, taken in a related IPR proceeding, with its Preliminary Response. During a conference call, Patent Owner argued that the transcript of the deposition of Petitioner’s expert in a related IPR proceeding included testimony relevant to limitations in claims 72-82 of the ’216 patent.  Further, Patent Owner argued that contentions made by the expert in the petition for this proceeding were refuted by statements made by that expert during his deposition in the other proceeding.

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Final Written Decision IPR2013-00289

Takeaway: The Board is careful not to import limitations from the specification.

In its Final Written Decision, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that claims 1-19 of the ’237 patent were unpatentable. The ’237 patent relates to tournament play having a qualifying round and a playoff round where the qualifying round is played between a player through a computer terminal and a host computer, while the playoff round is played with all players playing simultaneously within a specific time frame.  The Board found that Petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, and 8-19 are anticipated under 35 U.S.C. § 102 by Walker, and claims 4, 6, and 7 would have been obvious under 35 U.S.C. § 103 over Walker.

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Denying Petitioner’s Request for Rehearing of Institution Denial CBM2014-00114

Takeaway: A petitioner must identify the specific portions of the specification that describe the corresponding structure of each means-plus-function limitation in the challenged claims in the petition. It is not enough to show how those limitations are disclosed in the prior art.

In its Decision, the Board denied Petitioner’s request for rehearing of the denial of review of claims 1 and 2 of the ’387 Patent for failure to identify specific portions of the specification that describe the corresponding structure of each means-plus-function limitation recited in these claims. Continue reading

Granting Request for Rehearing but Declining to Modify its Previous Decision IPR2014-00745

Takeaway: The Board may grant a request for rehearing but then, upon reconsideration, decline to modify its previous decision.

In its Decision, the Board granted Petitioner’s Request for Rehearing. However, after reconsidering the ground for which rehearing was requested, the Board declined to modify its previous Decision. Continue reading