Final Written Decision IPR2013-00530

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Takeaway: A feature that is recited as only substantially covering a particular region may not be construed, under the broadest reasonable construction, to extend to the recited bounds of that region.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 1-4 and 6-8) of the ’563 patent are unpatentable. The ’563 patent “relates to a garment worn during different stages of pregnancy and different stages of postpartum body changes.” Continue reading

Final Written Decision IPR2013-00463

Takeaway: If a patent owner does not present rebuttal evidence or argument regarding a ground on which a trial was instituted, the Board is not required to “scour the record to locate evidence supporting patentability,” which may lead to a finding of unpatentability based upon the evidence presented in the Petition.

In its Final Written Decision, the Board concluded that all claims under review (claims 1-14) are unpatentable and denied Patent Owner’s contingent motion to amend for lack of sufficient analysis as to the patentability of the proposed substitute claims. Continue reading

Denying Institution IPR2014-01242

Takeaway: A grant of summary judgment in a related district court litigation does not function as a dismissal without prejudice for purposes of calculating the one year time bar under 35 USC 315(b); instead, the time period will continue to run.

In its Decision, the Board found that Petitioner Johnson Health Tech North America, Inc. (“JHTNA”) lacked standing because it was time-barred under 35 USC 315(b). In addition, because Petitioner Johnston Health Tech Co. Ltd. (“JHT”) is a privy of JHTNA, JHT was also found to lack standing. Therefore, the Petition was denied. Continue reading

Final Written Decision IPR2013-00505

Takeaway: The Board was persuaded that a claimed shampoo composition including both compositional elements and property elements represented by index values would have been obvious based on prior art containing an example having all of the compositional elements and the natural desire of an artisan to optimize for known desired properties of shampoo, when the specified index values were found to be proxies for the optimized properties.

In its Final Written Decision, the Board determined that the Petitioner demonstrated by a preponderance of the evidence that all of the instituted claims (claims 1-12, 15, 17-19, 23, 26, 28-30, and 32) are unpatentable. The ’569 patent relates generally to a shampoo composition and method for providing a combination of anti-dandruff efficacy and hair conditioning. Continue reading

Lifting Stay of Concurrent Reexamination IPR2013-00117

Takeaway: The Board lifted the stay of a co-pending ex parte reexamination after the conclusion of the IPR proceeding where the Patent Owner agreed not to amend the original claims considered during the IPR proceeding.

In its Order, the Board lifted the stay of ex parte reexamination Control No. 90/011,935 involving the ’040 patent during a teleconference. In an Order dated April 3, 2013, the Board had ordered a stay in the co-pending ex parte reexamination that included original claims 1-22 and newly added dependent claims 23-63. In this IPR proceeding on June 20, 2014, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 8, 9, 11, 12, 14, 15, and 19-22 of the ’040 patent were unpatentable. Thus, Patent Owner requested the Board to lift the stay. Continue reading

Order Granting Motion to Expedite IPR2015-00580

Takeaway: The Board has the authority to expedite a preliminary response under 37 C.F.R. § 42.5(c)(1).

In its Order, the Board granted Petitioner’s request to expedite Patent Owner’s Preliminary Response.  Also, the Board authorized Petitioner to submit a reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder in the event that Patent Owner elects to file an opposition to the Motion for Joinder. Continue reading

Decision on Institution of Inter Partes Review IPR2014-01252

Takeaway: Mere membership in a trade association, even one that focuses on the business of filing petitions for inter partes review, does not automatically make an entity a real party-in-interest to a petition filed by the trade association.

In its Decision, the Board instituted inter partes review of claims 1, 2, 7, 8, 10, 13, and 14 of the ’444 patent, with the sole instituted ground of challenge being the alleged unpatentability of each of these claims under 35 U.S.C. § 103 in view of Ulmer and Goldwasser.  The Board also concluded that the record did not reflect that Petitioner had failed to name all real parties-in-interest in its Petition. Continue reading

Denying Rehearing CBM2014-00135

Takeaway: The Board considers applying a combination of references to an independent claim in a request for rehearing that had been applied to a claim depending on that independent claim in the Petition as a new argument.

In its Decision, the Board denied both Petitioner’s and Patent Owner’s Requests for Rehearing of the Board’s decision to institute trial in a covered business method patent review of all challenged claims of the ’132 patent under 35 U.S.C. § 101, but denying institution of any claims under 35 U.S.C. §§ 102, 103, and 112. Petitioner requested that the Board reconsider and institute based on grounds 3-5 of the petition, which were obviousness grounds based on Silverman, Gutterman, and Togher. Patent Owner requested that the Board reconsider and deny institution of any CBM review of this patent based on the ’132 patent not qualifying for covered business method patent review. Continue reading

Terminating Proceedings IPR2014-00041, 43, 51, 55, 55

Takeaway: Where a real party-in-interest is not provided in the petition, the Board is not allowed to consider the petition, and any correction of the real party-in-interest will likely result in a new filing date as of the date the correction is made. This can result in the petition being time-barred.  

In the Decision, the Board granted Patent Owner’s motions addressing (1) whether Petitioner had identified all real-parties-in-interest (“RPIs”) in its Petitions, and (2) what relief should be granted if Petitioner failed to identify all RPIs in its Petitions, and thus vacated its decisions on institution in each of the five cases and terminated each of the proceedings. Continue reading

Denying Institution CBM2014-00166

Takeaway: A petitioner may not have sufficient standing for filing a petition for CBM review as having been sued for infringement or charged with infringement where the court in the related proceeding dismissed the complaint alleging infringement with prejudice.

In its Decision, the Board found that Petitioner failed to satisfy the standing requirements under 37 C.F.R. § 42.304(a) to a file a Petition for covered business method patent review because the Petition did not provide sufficient proof that Petitioner was “charged with infringement of the patent.” Continue reading