Denying Institution IPR2014-01130

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Takeaway: When construing a claim term, a petitioner should take into account all the words in the claim term. In failing to do so, the Board may not adopt the proposed construction, which could result in a denial of institution.

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 ’887 patent relates to “a dishwasher basket designed to hold baby bottle nipples, non-spill cup valves, feeding straws, and the like.” Continue reading

Denying Second Request for Rehearing IPR2014-00319

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Takeaway: The parties are not permitted to request panel expansion.

In its Decision, the Board denied Petitioner’s request for relief in the form of a second rehearing of the decision not to institute inter partes review.  In particular, the Board concluded that Petitioner’s Notice had failed to show sufficient basis for a second request for rehearing under 37 C.F.R. § 42.21(c)(1). Continue reading

Granting Leave to File Motion to Strike Deposition Testimony CBM2014-00102, 106, 108, 112

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Takeaway: A Patent Owner should not attempt to discover information concerning the operation of Petitioner’s products during the deposition of Petitioner’s expert if the expert’s declaration does not address the topic and the Board has denied a motion for additional discovery concerning the operation of Petitioner’s products. Even if the Board does not order the Patent Owner to cease its questions concerning the topic, it may authorize a motion to strike and sanction Patent Owner for discovery abuses.

In its Order, the Board authorized Petitioner to file a Motion to Strike questions and answers in the transcript of the deposition of Petitioner’s expert.

Petitioner requested a call with the Board during the deposition of its expert because it objected to the scope of questioning by Patent Owner’s counsel. Continue reading

Denying Institution IPR2014-00854

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Takeaway: The Board may decline to institute inter partes review in the case where the Petition challenges an earlier version of the claims that does not appear in the patent as issued.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood of prevailing in establishing the unpatentability of any challenged claim of the ’564 patent. Consequently, the Board declined to institute inter partes review of any claim of the ’564 patent.  The Petition was thus denied, and no trial was instituted. Continue reading

Denying Rehearing of Institution Denial IPR2014-00506

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Takeaway: The Board has discretion to deny institution when the art or arguments raised in a second petition for inter partes review are substantially the same as in a first petition and may consider whether any new prior art or arguments raised in the second petition were known or available to the petitioner at the time of filing the first petition.

In its Decision, the Board denied Petitioner’s request for rehearing of its decision declining to institute inter partes review of claims 13-14, 16, 20-22, 24-25, 27, 31, and 33 of U.S. Patent No. 6,974,569 B2 and also denied its request for panel expansion. Continue reading

Denying Institution IPR2014-00842

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Takeaway: A petitioner must provide evidence showing why each and every element of the claims would have been obvious when presenting a ground of unpatentability based on obviousness. Merely stating that a feature would have been obviously taught by the combination of references is insufficient.

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 ’748 patent relates to “methods of treating cancer using ErbB receptor-directed cancer therapies.” Continue reading

Denying Leave to File a Motion for Additional Discovery IPR2014-01357, 1362

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Takeaway: Discovery does not start until a trial is instituted, and the Board will not make an exception where a request for additional discovery is made close to the date that a Preliminary Response is due.

In its Order, the Board denied Patent Owner’s request to file a motion for additional discovery. Patent Owner requested additional discovery directed to the relationship between Petitioner and certain defendants, Dell and HP, in infringement lawsuits brought by Patent Owner in the Eastern District of Texas. Both lawsuits against Dell and HP were filed more than one year prior to the filing of the Petition. Patent Owner contends that Petitioner was controlling the district litigation for Dell and HP. Patent Owner based its contention on Petitioner indemnifying Dell and HP as a supplier of liquid crystal displays. Petitioner acknowledged that it indemnifies Dell and HP for patent infringement, but it does not control the District Court litigations in which they are involved.

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Order Regarding Deposition IPR2014-00312

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Takeaway: If a party wants to rely on the declaration of an expert residing outside of the United States, the Board may require that party to arrange for the expert to be deposed in the United States or withdraw the expert’s declaration from the proceeding.

In its Order, the Board ordered Patent Owner to make its expert Dr. Bordeauducq available for cross-examination in the United States at a time acceptable to both parties.  Alternatively, the Board gave Patent Owner the option of requesting the withdrawal of Dr. Bordeauducq’s declaration from the proceeding. Continue reading

Denying Motion for Joinder IPR 2013-00419

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Takeaway: The party filing a motion for joinder bears the burden of showing that joinder is appropriate.

In its Decision, the Board denied Petitioner’s Motion for Joinder, which had been filed more than three months after oral argument had taken place and within two months of an upcoming statutory due date for the Board to issue its final written decision. At the time of the filing of the Motion for Joinder, all events for the trial before the Board had concluded except for the issuance of the Board’s final written decision. Continue reading

Final Written Decision IPR2013-00416

All challenged claims found unpatentable

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Takeaway: Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight, and the Board has discretion to give weight to one item of evidence over another unless no reasonable trier of fact could have done so.

In its Final Written Decision, the Board decided that Petitioner had demonstrated that claims 1, 6-8, 17, and 18 of the ’501 patent are unpatentable as anticipated by Probst under 35 U.S.C. § 102(b); and that claims 1, 4-10, 17, and 18 of the ’501 patent are unpatentable as having been obvious under 35 U.S.C. § 103 in view of Scholl taken in combination with Probst. Continue reading