Denying Institution of Inter Partes Review IPR2014-00871

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Takeaway: When the public accessibility of a reference relied upon to establish unpatentability may be challenged, Petitioner should identify the circumstances and manner in which persons interested and ordinarily skilled in the subject matter could locate the reference.

In its Decision, the Board denied institution of inter partes review of claims 1-25 and 34-41 of U.S. Patent No. 6,845,389 B1.

The ’389 patent is directed to “a system and method of broadband multi-user communication sessions.” For example, in a gaming application, the ’389 patent “supports QoS [quality of service] provisioning and avoids the bottleneck of routine gaming communications . . . through a game server.” The ’389 patent discloses “using SIP [Session Initiation Protocol], Sessional Announcement Protocols, and Session Description Protocols to identify the QoS requirements for the session, and reserve the necessary resources.” Continue reading

Order Regarding Institution of Inter Partes Review IPR2015-00065

Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.

The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response. Continue reading

Final Written Decision CBM2013-00027

Takeaway: Patent Owner cannot incorporate its arguments in its Response regarding patentability of patent claims into its Motion to Amend to address how proposed substitute claims are patentably distinct from the prior art of record.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1-23 of the ’419 Patent are indefinite under 35 U.S.C. § 112 ¶ 2, and that claims 1-4, 6-23, and 41-49 are unpatentable under 35 U.S.C. § 103(a). The Board found that Petitioner had not demonstrated by a preponderance of the evidence that claim 5 is unpatentable under 35 U.S.C. § 103(a). The Board denied Patent Owner’s Motion to Amend. The ’419 Patent generally relates to the conditional trading of securities, such as convertible bond swaps, risk arbitrage, and combinations thereof, in both listed and over-the-counter markets via one or more electronic networks. Continue reading

Denying Request for Rehearing IPR2014-00742

Takeaway: Claim interpretation in an infringement context in district court may be different from the broadest reasonable interpretation applied in an inter partes review.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision to institute inter partes review of claims 1, 5, 6, and 10 of the ‘113 patent on two asserted grounds and denying institution of one asserted ground. Continue reading

Decision to Institute with Partial Denial IPR2014-01053

Takeaway: The publication of a court’s decision in the Federal Supplement reporter does not make the underlying litigation documents sufficiently publicly accessible to qualify them as printed publications for the purposes of prior art.

In its Decision, the Board decided to institute inter partes review of only claims 1-5 and 8 of the ’501 patent on one ground of unpatentability and denied institution as to every other asserted ground and challenged claim.  The ’501 patent “relates to a play gym which suspends an object over a mat within a play yard.” Continue reading

Termination of Proceedings CBM2014-00072-75

Takeaway: The bar under 35 U.S.C. § 325(a)(1) is a statutory requirement and, thus, cannot be waived.

In its Decision, the Board ordered the termination of the trials in CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-00075, and vacated its Decisions on Institution in each of these proceedings, because it found that Petitioner had filed a declaratory judgment action that resulted in a bar under 35 U.S.C. § 325(a)(1). Continue reading

Denying Institution IPR2014-00891

Takeaway: A reference is publicly accessible upon a satisfactory showing that the reference has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.

In its Decision, the Board denied the Petition as to all challenged claims. Thus, no trial was instituted. Continue reading

Final Written Decision IPR2013-00401

Takeaway: Inherent anticipation requires evidence that the inherent feature is necessarily present.

In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that claims 1-14 and 26 of the ’533 patent are unpatentable, but failed to show by a preponderance of the evidence that claims 15, 21, and 22 are unpatentable. The ’533 patent relates to methods of treating diseases and injuries to the central nervous system, especially the eyes, comprising administering a therapeutically-effective amount of astaxanthin. Continue reading

Decision on Institution IPR2014-00689

Takeaway: The fact that an attorney working as in-house counsel both for a petitioner and a company that would be barred from filing a petition is not sufficient, by itself or even with evidence that the two companies have shared interests with regard to the proceeding, to render the company a real party-in-interest in the proceeding, because the particulars of the attorney’s employment associations do not affect the corporate relationship between the two companies.

In its Decision, the Board instituted inter partes review of claims 1, 2, 18, and 19 of the ’520 patent, because they determined that Petitioner established a reasonable likelihood of prevailing on the unpatentability of those claims. However, the Board did not institute grounds that involved the unpatentability of claim 6. The ’520 patent generally relates to a method and apparatus for improving marine seismic survey techniques by more effectively controlling the movement and positioning of marine seismic streamers towed in an array behind a boat. Continue reading

Denying Institution IPR2014-00678

Takeaway: Asserting multiple grounds of unpatentability against the same claim may not be helpful in a situation where one deficiency in the disclosure of the prior art pervades every asserted ground of unpatentability.

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 the sole challenged claim.  The ’038 patent relates to “a sea-borne seismic acquisition tracking and positioning system that tracks the geometry of a towed seismic streamer array and the relative positions of each individual streamer forming the array elements, ‘so that the towed seismic array data acquisition runs are repeatable, thereby enabling acquisition of four-dimensional geophysical data (x, y, z, time).’” Continue reading