Denying Institution of Inter Partes Review IPR2014-00914

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Takeaway: An adequate showing that a reference is prior art as of its provisional application filing date under § 102(e ) requires a credible explanation as to how the disclosure in the provisional application provides sufficient written description support for the relied-upon features in the reference.

In its Decision, the Board denied the Petition, and found that Petitioner had not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of claims 1-3, 6-15, and 18-22 of the ‘299 patent. Thus, no trial was instituted. Continue reading

Decision Denying Institution IPR2014-01222

Takeaway: A petition must take into account all words in a claim.

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 of challenged claims 1-4 and 7-11 of the ‘336 patent.  The ‘336 patent “relates to a method for enabling the converting, navigating, and displaying of video content from a video content provider on an open online network to a discrete digital TV service provider network.” Continue reading

Denying Request for Rehearing of Final Written Decision IPR2013-00322

Takeaway: A showing that a reference discloses a means-plus-function element requires showing that the reference discloses the corresponding structure in the context of performing the recited function.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s determination in the previously-rendered Final Written Decision. The Board indicated that it had considered the Request for Rehearing but nonetheless elected to decline to modify the Decision. Continue reading

Final Written Decision IPR2013-00431

Takeaway: To successfully assert secondary considerations such as commercial success and industry praise, Patent Owner must establish a nexus between the claimed invention and the commercial success or industry praise.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that claims 1-16 of the ’186 Patent are unpatentable. The Board also dismissed as moot both Petitioner’s and Patent Owner’s Motions to Exclude Evidence and considered Patent Owner’s observations to the cross-examination testimony of Dr. Stone, who was cross-examined after Petitioner filed its Reply. Continue reading

Decision on Institution of Inter Partes Review IPR2014-01208

Takeaway: There is no per se rule that a petitioner must demonstrate how a petition is not redundant to any prior art and argument previously presented to the Office under 35 U.S.C. § 325(d). Instead, the Board has discretion under this statute to consider whether the same or substantially the same prior art or arguments were previously presented to the Office.

In its Decision, the Board concluded that Petitioner had persuasively demonstrated a reasonable likelihood of showing that claims 2, 3, 5, 7, 11, 12, 18, 19, 21-26, 28, 32-35, 37, 40, and 44-46 of the ’522 patent are unpatentable. Thus, the Board instituted trial with respect to these claims.  The Board was not similarly persuaded as to challenged claims 4, 16, 17, and 20, and therefore did not institute trial with respect to challenged claims 4, 16, 17, and 20.  The ’522 patent relates “to vision or imaging systems for vehicles . . . that are operable to determine if a vehicle or object of interest is adjacent to, forward of, or rearward of the subject vehicle to assist the driver in changing lanes or parking the vehicle.” Continue reading

Denying Institution IPR2014-01279

Takeaway: A petition that relies upon a rationale of obviousness that was overcome during prosecution should address, in the first instance, any arguments that successfully overcame that rationale during prosecution.

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 of challenged claims 1-15 of the ‘799 patent.  The ‘799 patent “relates to antiparasitic pharmaceutical compositions said to be useful for treating flea infestation on pets, particularly dogs and cats.” Continue reading

Granting Motion to Correct Filing Date IPR2015-00239, 240, 241, 242, 243, 247

Takeaway: A petition that is filed late due to a petitioner’s failure to electronically submit a petition in PRPS may still be accorded an earlier filing date if the failure was due to an inadvertent clerical error and all statutory requirements had been otherwise satisfied.

In its Decision, the Board granted Petitioner’s motion to correct the filing date and accorded the Petition a filing date of November 6, 2014. The Board explained that the “purpose of a petition is to give adequate notice to a patent owner of the basis for relief by laying out the grounds of unpatentability proposed by a petitioner, as well as any supporting evidence.” Continue reading

Final Written Decision IPR2013-00424

Takeaway: Although, in general, the process by which a product is made is irrelevant in a product claim, the process may provide evidence of no anticipation where the process imparts structural and functional differences over the prior art.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that the challenged claims of the ‘000 patent are unpatentable. Continue reading

Denying Authorization for Stay IPR2015-00290

Takeaway: A stay for an indefinite time period which is entered during a preliminary proceeding may significantly impact the applicable statutory pendency goals.

In its Order, the Board denied Petitioner’s request for authorization to file a motion for stay of the proceeding. According to the Board, the reasons put forth by Petitioner for granting a stay did not sufficiently support Petitioner’s authorization request. Continue reading

Denying Institution IPR2014-01092

Takeaway: An obviousness showing requires “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”

In its Decision, the Board denied the Petition as to all challenged claims of the ’974 patent. Consequently, no trial was instituted.

The Petitioner had challenged claims 1, 3-5, 7-11, 13, and 17 of the ’974 patent, which relates to light emitting panel assemblies. Using the broadest reasonable construction standard applicable for an unexpired patent, the Board found that all claim terms other than “deformities” were entitled to their plain and ordinary meaning.  As for the term “deformities” appearing in all of the challenged claims, the Board adopted Petitioner’s proposed construction (which was previously adopted and agreed to by the district court) as meaning “any change in the shape or geometry of a surface and/or coating or surface treatment that causes a portion of light to be emitted.” Continue reading