Final Written Decision IPR2013-00415

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Takeaway: When interpreting claims, the Board may interpret claim terms for which the parties did not expressly propose constructions when necessary to evaluate the parties’ arguments.

In its Final Written Decision, the Board determined that Petitioner showed by a preponderance of the evidence that all of the challenged claims of the ’210 patent are unpatentable.

The ’210 patent relates to arrangements and techniques for managing vehicle diagnostic information. In an embodiment, sensors are arranged throughout the vehicle to collect data and an antenna array is mounted on the vehicle to receive wireless signals from the sensors. A control system processes the signals for display and/or transmission to a remote location. Continue reading

Denying Motion to Submit Supplemental Information IPR2014-00524

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Takeaway: A motion to submit supplemental information will not be granted if the supplemental information would change the evidence relied upon in the petition to thereby bolster the grounds of unpatentability, based on feedback gleaned from the institution decision.

In its Decision, the Board denied Petitioner’s Motion to Submit Supplemental Information, finding that the requested relief would change the evidence Petitioner relied upon in its original challenge to claims 7-11 of the ‘586 patent. Continue reading

Denying Authorization for Additional Discovery IPR2014-00360

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Takeaway: The Board does not have authority to issue a subpoena for the production of a witness residing in the United States; instead, such production must be compelled through a subpoena from a U.S. District Court.

In its Order, the Board denied Petitioner’s request for authorization to file a motion for additional discovery in relation to three out of four items that had been identified by Petitioner.  At the same time, the Board conditionally granted Petitioner’s request for authorization to file a motion for additional discovery with respect to the fourth item, in the event that the parties were not able to resolve among themselves the issues relating to that item. Continue reading

Final Written Decision IPR2013-00391

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In its Final Written Decision, the Board held that claims 1, 20, 30, 31, 67, 107, and 108 of the ’067 patent are unpatentable. At the same time, the Board found that claims 21 and 22 of the ’067 patent were not shown to be unpatentable.

Petitioner had requested inter partes review of claims 1, 20-22, 30, 31, 35, 67, 107, and 108 of the ’067 patent.  The Board then instituted trial with respect to each of these challenged claims.  The grounds upon which institution was based were alleged anticipation under 35 U.S.C. § 102 of claims 1, 20, 31, 67, 107, and 108 in view of Cronce and of claims 1, 20-22, 30, 31, 67, 107, and 108 in view of Deluca. Continue reading

Denying Institution IPR2014-00874

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Takeaway: To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.

In its Decision, the Board declined to institute inter partes review of any of the challenged claims of the ’774 patent.  In particular, the Board found that Petitioner had not shown a reasonable likelihood that it would prevail in showing that the challenged claims were anticipated under 35 U.S.C. § 102(e) or would have been obvious under 35 U.S.C. § 103(a). Continue reading

Denying Institution IPR2014-00547

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Takeaway: There must be some articulated reasoning with some rational underpinning to support each proposed legal conclusion of obviousness.

In its Decision, the Board declined to institute inter partes review of any of challenged claims 7-12 or 19-24 of the ’944 patent.  Specifically, the Board held that Petitioner had not shown a reasonable likelihood that it would succeed in proving that any one of claims 7-12 or 19-24 is unpatentable under the various grounds set forth in the Petition. Continue reading

Denying Rehearing Request IPR2013-00418

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Takeaway: A patent owner relying upon the secondary consideration of failure of others should provide evidence that failed attempts by others were within the scope of the challenged claims.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding the challenged claims of the ’362 patent unpatentable. Patent Owner asserted in its Request that the Board misapprehended or overlooked the applicable legal standard and evidence of secondary considerations of nonobviousness.  In particular, Patent Owner argued the secondary considerations of long-felt, but unsolved need; failure of others; and commercial success. Continue reading

Denying Institution IPR2014-00869

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Takeaway: It is not sufficient for a petition to merely establish that all claim limitations are known in the prior art; the petition must also establish that it would have been obvious to combine the prior art elements as recited in the challenged claims.

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 ‘726 patent relates to a vehicle accessory system that attaches to the interior of the windshield of the vehicle. Continue reading

Denying Institution of Inter Partes Review IPR2014-00832, 835, 838

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Takeaway: When all of the proposed obviousness combinations include the same reference, the Board will deny institution if it determines that Petitioner did not establish that the reference was prior art.

In its Decision, the Board denied three petitions to institute inter partes review of claims in U.S. Patent Nos. 8,482,274 B2; 8,536,856 B2; 8,598,864 B2 (the “Power Survey Patents”).

The Power Survey Patents all relate generally to apparatuses and methods for detecting voltage anomalies in electric fields. As summarized by the Board, “[t]he Power Survey Patents explain that, based on the electric field data, the system can identify a voltage anomaly in the electric field and then send a signal to an indicator for alerting a user to the presence of the voltage anomaly in the electric field.” Continue reading