Denying Leave to File an Additional Motion to Exclude IPR2014-00042

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Takeaway: A motion to exclude is for seeking the exclusion of evidence, not the exclusion of attorney argument.  Also, argument made by counsel at oral hearing does not become evidence simply because it may appear in a transcript of the oral hearing.

In its Order, the Board refused Patent Owner’s request for authorization to file an additional motion to exclude.  Also, the Board ordered that Paper 46 be expunged from the record. Continue reading

Granting and Denying Additional Discovery IPR2014-01380

Takeaway: The likely existence of indemnification agreements and litigation documents potentially relevant to a petitioner’s privity that would time bar the petition by itself is not sufficient to order discovery under routine discovery, but may be sufficient under additional discovery.

In its Order, the Board granted in part Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner alleged that the Petition was time-barred based on Petitioner’s privity with a defendant in a litigation and requested discovery of “Petitioner’s indemnification and control of the legal defense in the ongoing litigation involving the challenged patent” under either routine discovery or additional discovery. Continue reading

Denying Request for Rehearing of Institution Denial IPR2014-00809

Takeaway: If a petition includes a typographical error that leads to a decision not to institute, the correct course of action is not to file a request for rehearing, but instead to file a motion to correct the petition with a request to modify the decision.

In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute review of claims 3, 26, and 27 of the ’792 Patent. In its Decision on Institution, the Board instituted review of claims 1, 2, and 4-17, but declined institution of claims 3, 26, and 27. Continue reading

Final Written Decision IPR2013-00350

Takeaway: The fact that alternative combinations may be suggested by the prior art does not necessarily indicate a teaching away, even if those alternatives are superior to the combination proposed in the petition.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that all challenged claims (claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76) are unpatentable. Continue reading

Order on Conduct of the Proceedings IPR2014-00221, 227

Takeaway: Parties may seek to depose a declarant regardless whether the declaration is filed or served.

In its Order following a conference call, the Board addressed Patent Owner’s request for guidance “regarding (1) new evidence submitted with Petitioner’s Reply in IPR2014-00221 and IPR2014-00227; and (2) whether it will be entitled to a deposition of a declarant if a declaration is filed in response to a Motion to Exclude, and if so whether the timing of the deposition can be arranged to not interfere with the Christmas Holiday.” The Board reserved judgment regarding the alleged new evidence until it has prepared its final written decision and declined to order Petitioner to make its declarant available for deposition. Continue reading

Expungement of Unauthorized Motion to Withdraw as Counsel IPR2014-01523

Takeaway: Under 37 C.F.R. § 42.10(e), counsel may withdraw from an inter partes review proceeding only with prior authorization from the Board.

In its Order, the Board – sua sponte – ordered that Patent Owner’s Motion to Withdraw be expunged from the record.  According to the Board, the Motion was improperly filed.  Thus, counsel for Patent Owner will remain the same until further developments so dictate. Continue reading

Final Written Decision CBM2013-00025

All challenge claims found to be unpatentable under 35 U.S.C. 101

Takeaway: Under the Alice decision, the Board may find a claim to be patent-ineligible if it is directed to one of the patent-ineligible concepts and does not include additional limitations that transform the nature of the claim into a patent-eligible application.

In its Final Written Decision, the Board concluded that Petitioner had proven by a preponderance of the evidence that each of claims 1-3, 5-7, 9-11, and 13-15 of the ’430 patent are unpatentable under 35 U.S.C. § 101. Also, the Board denied Patent Owner’s Motion to Exclude the Declaration of Dr. Freedman. Continue reading

Denying Institution of Inter Partes Review IPR2014-00783

Takeaway: A decision to institute review on some claims in a first inter partes review should not act as a how-to guide for the same petitioner filing a second petition for inter partes review challenging claims that it unsuccessfully challenged in the first petition or claims that it reasonably could have challenged in the first petition.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (claims 1-43) of the ’970 Patent.  The ’970 Patent relates to filtering multimedia content, such as scenes or languages unsuitable for viewers of some ages, specifically to a computerized system for identifying and filtering automatically portions of the multimedia content during the decoding process. Continue reading

Denying Request for Rehearing of Institution Denial IPR2014-00728

Takeaway: In a request for rehearing, the party making the request must support its position with evidence from the original papers.

In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute trial with respect to claims 13 and 14 of the ’585 Patent. In its Decision on Institution, the Board instituted review of claims 1-3, 2, 10, and 16-19, but declined institution of claims 13 and 14. Continue reading

Final Written Decision IPR2013-00357

Takeaway: In a motion to amend, the patent owner must provide claim constructions for any newly added claim terms and must also provide written description support for the new claims as a whole, not just the newly added features.

In its Final Written Decision, the Board found that all challenged claims (1-11) of the ’766 Patent are unpatentable and denied Patent Owner’s Motion to Amend. The ’766 Patent relates to automated data storage and retrieval systems that comprise a library of media elements as well as one or more drives for reading from, and writing to, the media elements in the library. Continue reading