In its Order, the Board expunged Paper 12. Also, the Board ordered the inventor (Dr. Louis Sanfilippo) to refrain from contacting Petitioner or anyone associated with Petitioner in connection with this proceeding; that any communication from Patent Owner to Petitioner or its representatives in this proceeding must be signed by Patent Owner’s counsel of record; that Dr. Sanfilippo cannot sign any paper to be filed with the Board in this proceeding (instead, all papers must be signed by Patent Owner’s counsel of record); and that Petitioner is authorized to file a motion for sanctions against Patent Owner. Continue reading
Monthly Archives: January 2015
Final Written Decision IPR2013-00452
In its Final Written Decision, the Board held that Petitioner had demonstrated by a preponderance of the evidence that claim 1 of the ’204 patent is unpatentable as anticipated under 35 U.S.C. § 102(b) and as having been obvious under 35 U.S.C. § 103(a). Claim 1 was the only claim challenged in this particular inter partes review proceeding. Continue reading
Denying Institution of Inter Partes Review IPR2014-01095
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 of the ’816 Patent. The ’816 patent relates to a light emitting panel assembly having a light emitting panel member with an input edge that receives light from the light source, and end edge and side edge reflectors. Continue reading
Denying Institution of Covered Business Method Review CBM2014-00149, 150, 151, 153
In its Decision, the Board denied institution of covered business method patent review of all of the challenged claims (claims 1-11) of the ’730 Patent, because Petitioner had not demonstrated that the ’730 Patent is a “covered business method patent” pursuant to the statutory definition in § 18(d)(1) of the AIA. Petitioner had challenged claims 1-11 of the ’730 Patent as unpatentable under 35 U.S.C. §§ 101, 102(b), and 103(a). The ’730 Patent relates to a method for controlling access to sensitive prescription drug prone to potential abuse or diversion, by utilizing a central pharmacy and database to track all prescriptions for the sensitive drug. Continue reading
Final Written Decision IPR2013-00577
In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that claims 1-5, 9-11, 15-17, 21, and 22 of the ‘573 patent are unpatentable. Continue reading
Decision Denying Institution IPR2014-01205
In its Decision, the Board denied institution of inter partes review, finding that the Petition failed to establish a reasonable likelihood of prevailing with respect to any of claims 1-18 under either 35 U.S.C. § 102 or 103. The ‘847 patent “relates to seismic data acquisition, and more particularly to a method and system for transmitting data between multiple remote stations in an array and a data collection station utilizing a linked relay system to communicate therebetween, permitting transmission paths to be altered.” Continue reading
Order Regarding Certificate of Correction IPR2014-00245
In its Order, the Board authorized Patent Owner to file a request for certificate of correction to correct a “printing error” in claim 14 of U.S. Patent No. 8,392,684 B2. Continue reading
Final Written Decision IPR2013-00417
In its Final Written Decision, the Board granted Patent Owner’s Second Motion to Amend Claims, in which every challenged claim was canceled with the exception of claim 9, and found that Petitioner had established by a preponderance of the evidence that claim 9 is unpatentable. The Board also granted-in-part Patent Owner’s Motion to Exclude Evidence and denied Petitioner’s Motion to Strike. Continue reading
Final Written Decision IPR2013-00402, IPR2013-00403
Takeaway: On a Motion to Amend, Patent Owner bears the burden, by a preponderance of the evidence, to demonstrate the patentability of its proposed substitute claims, taking into account 35 U.S.C. §§ 101 and 112 in addition to 35 U.S.C. §§ 102 and 103 in view of known prior art.
In its Final Written Decisions in two related cases, the Board granted-in-part Patent Owner’s Motions to Amend U.S. Patent Nos. 8,312,226 B2 and 8,370,583 B2.
In IPR2013-00402, the Board granted Patent Owner’s Motion to the extent it requested cancellation of claims 1-12 of the ’226 patent, and with respect to proposed substitute claims 13 and 15. The Board, however, denied Patent Owner’s motion with respect to proposed substitute claims 14 and 16-18. Similarly, in IPR2013-00403, the Board granted Patent Owner’s Motion to the extent it requested cancellation of claims 1–27 of the ’583 patent, and with respect to proposed substitute claims 28 and 30. The Board, however, denied Patent Owner’s motion with respect to proposed substitute claims 29 and 31–33. Continue reading
Instituting Covered Business Method Review CBM2014-00155
In its Decision, the Board is instituting covered business method patent review of certain claims of the ’245 patent based on the following grounds: claims 1-16 as directed to non-statutory subject matter under 35 U.S.C. § 101; claim 12 as indefinite under 35 U.S.C. § 112, second paragraph; claims 1-4 and 6-16 as having been obvious over Murray under 35 U.S.C. § 103(a); claim 5 as having been obvious over the combination of Murray and Con Edison under 35 U.S.C. § 103(a); and claims 1, 2, 5-9, 13, and 14 as having been obvious over the combination of Brewster and Con Edison under 35 U.S.C. § 103(a). The Board denied all other grounds raised in the Petition. Continue reading