Monthly Archives: February 2015

Final Written Decision CBM2013-00037

all challenged claims found unpatentable

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Takeaway: The Board may construe the phrase “computer implemented method” recited in a claim in a manner that does not foreclose the possibility of some of the method steps being performed manually.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-14 of the ’937 patent are unpatentable.  The Board also addressed certain Motions to Exclude that Petitioner had filed, and denied Patent Owner’s Motion to Amend. Continue reading →

Denying Joinder and Institution IPR2015-00118

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Takeaway: The Board may deny a petition asserting grounds that had already been denied in a previous proceeding using its discretion under 35 U.S.C. § 325(d), and not even consider the grounds on their merits where additional explanation had been provided.

In its Decision, the Board denied institution of inter partes review and denied Petitioner’s Motion for Joinder.   Petitioner had filed a motion requesting joinder to IPR2014-00519, in which the Board instituted inter partes review from some claims, but denied review of other challenged claims. The ’580 patent relates to “a data communications system in which a plurality of modulation methods are used to facilitate communication among a plurality of modem types.” Continue reading →

Clarifying Distinction Between Supplemental Information and Evidence IPR2014-01208

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Takeaway: Supplemental evidence is evidence going to the admissibility of originally filed evidence and is filed in response to a motion to exclude; supplemental information is evidence supporting an argument on the merits and may only be filed after a Section 123 motion is authorized and granted.

In its Order, the Board addressed four topics that were discussed during a conference call between the parties: “(a) the scheduling order, (b) refiling of exhibits, (c) Petitioner’s request to file supplemental information, and (d) Patent Owner’s request to file supplemental information.” Continue reading →

Order Regarding Translator Declarations CBM2014-00131, CBM2014-00137

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Takeaway: A patent owner is entitled to cross-examine, as routine discovery, individuals who translate prior art references that form the basis for the Board’s institution of review, and the Patent Owner is not required to produce documents to be used in the cross-examination before the deposition.

In its Order, the Board resolved a dispute between the parties concerning whether Patent Owner is permitted to depose individuals who translated one of the references that forms the basis for the Board’s institution of review. In particular, the Board ordered Petitioner to file the declarations of individuals who translated portions of the prior art reference, ordered that Patent Owner is authorized to cross examine the individuals who translated the reference, and denied Petitioner’s request to file a motion for additional discovery. Continue reading →

Final Written Decision IPR2013-00479

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Takeaway: To establish a nexus between commercial success of a computer-related product and a challenged patent claim, evidence beyond publicly-available, generalized hearsay statements is likely to be required, and could even include evidence such as source code.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 18-20, 45, 48, 49, 51, and 54) of the ‘494 patent are unpatentable. The ‘494 patent “relates to computerized research on databases” and “discloses that it improves search methods by indexing data using proximity indexing techniques.” Continue reading →

Denying Motion to Terminate IPR2014-00220, 221, 222, 227

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Takeaway: Although a change to the list of real-parties-in-interest on record should be filed via an Updated Mandatory Notice within 21 days of the effective date of the change, the Board may excuse lateness of this type of submission if the interests of justice so require.

In its Decision, the Board denied Patent Owner’s Motion to Terminate. Patent Owner had argued that the failure by Petitioner to timely identify Valeo North America, Inc. as a real-party-in-interest warranted termination of the proceedings; but the Board disagreed. Continue reading →

Order on Request to Expunge Evidence or Argument CBM2014-00182

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Takeaway: The Board will expunge from the record and will not consider with a Preliminary Response any new testimony that is taken specifically for the proceeding at issue.

In its Order, the Board ruled on Petitioner’s request that the Board expunge certain exhibits from the record and strike any corresponding argument in Patent Owner’s Preliminary Response. According to Petitioner, the exhibits and Preliminary Response included new testimonial evidence in violation of 37 C.F.R. 42.207(c). Continue reading →

Final Written Decision IPR2013-00480

4 challenged claims not found unpatentable; 1 claim found unpatentable; and 5 claims canceled by Patent Owner

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Takeaway: If circumstances dictate, the Board may construe the steps in a method claim to require a specific arrangement with respect to order in which the steps are performed.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claim 14 of the ’494 patent is unpatentable. The Board determined that Petitioner had not shown that claims 1, 5, 15, and 16 of the ’494 patent are unpatentable, however.  The Board also granted Patent Owner’s Motion to Amend canceling claims 8, 10, 11, 35, and 40 of the ’494 patent, and denied Patent Owner’s Motion to Exclude the Reply Declaration of Dr. Edward A. Fox (Exhibit 1028). Continue reading →

Decision Denying Rehearing IPR2014-00987

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Takeaway: 35 U.S.C. § 314(a) permits the Board to institute any ground of unpatentability that meets the reasonable likelihood standard, but it does not require the Board, where a petition presents multiple grounds, to institute all grounds that meet the reasonable likelihood standard or even to substantively analyze each and every ground.

In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s decision instituting review of the challenged claims under one ground, but denying institution of review over the second ground. Petitioner argued “that (1) 35 U.S.C. § 314(a) does not provide statutory authority to deny Ground 2 without substantive analysis; (2) the application of 37 C.F.R. § 42.108(a) was an abuse of discretion; (3) estoppel effects mandate full consideration of Ground 2; (4) 35 U.S.C. § 315(d) suggests that multiple grounds of rejection should be evaluated substantively; (5) Ground 2 is not redundant or duplicative; and (6) it would be premature to deny Ground 2 without trial.” The Board did not find any of these arguments persuasive. Continue reading →

Final Written Decision IPR2013-00468

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Takeaway: For secondary considerations to be persuasive, Patent Owner must show a nexus between the secondary consideration and the challenged claims and explain in detail why it was the unique characteristics of the claimed invention that resulted in the secondary consideration.

In its Final Written Decision, the Board held that Petitioner had demonstrated by a preponderance of the evidence that all of the challenged claims 1-37 of the ’192 patent are unpatentable as obvious over Wright Jr. alone or in combination with Goodman. The ’192 patent relates to a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs. Continue reading →