Takeaway: A parent-subsidiary relationship alone is not sufficient to establish that a party is a real party-in-interest. However, a party that represents the “unified interests” of itself and a petitioner with respect to the proceeding will likely be considered a real party-in-interest.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of inter partes review. A request for rehearing may be granted where the Board abused its discretion in its decision on institution. The moving party “must specifically identify all matters the party believes the Board misapprehended or overlooked.” Continue reading
Takeaway: The Board may consider a copyright date and price printed on the first page of a reference as sufficient evidence of public availability of the document as of the copyright date.
In its Decision, the Board concluded that Petitioner had established “a reasonable likelihood that it will prevail with respect to at least one challenged claim” of U.S. Patent No. 8,508,593 and instituted inter partes review. The ’593 patent generally relates to “accessories used in windshield electronics modules and interior rearview mirror assemblies.” Petitioner sought IPR of claims 1-3, 6-12, 16, 18-31, 33-29, 76-80, and 82-85, arguing that claims 22, 37, and 39 were unpatentable under § 103 as obvious over Campbell, Goldbeck, Kuehnle, and Yanagawa and that the remaining claims were obvious over Campbell, Goldbeck, and Kuehnle. Continue reading
Takeaway: The fact that a panel of the Board issues a split decision is not by itself a reason to allow for review by an expanded panel.
In its Decision, the Board denied Petitioner’s request that an expanded panel be allocated to decide the merits of the request for rehearing the denial of institution, and denied Petitioner’s request for rehearing. Continue reading
Takeaway: If a patent owner relies upon reduction of practice by a third party to pre-date a prior art reference, the patent owner must have proof beyond inventor testimony that it conceived of the claimed invention and that it communicated the claimed invention to the third party.
In its Final Written Decision, the Board found that the sole claim of the ’731 Patent is unpatentable. The ’731 Patent relates to “[t]he ornamental design for a multiple crock buffet server” “with two or more oval server bowl inserts situated adjacent opposite ends of the heated server base unit housing.” The parties accepted the Board’s interpretation of the claims from the Decision on Institution. Continue reading
Takeaway: When requesting review of a claim that includes a means-plus-function term, a petitioner must provide a sufficient description of the corresponding structure disclosed in the specification. If the patent does not include sufficient structure, the Board will not institute an IPR.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision to institute inter partes review of U.S. Patent No. 6,362,850. The Board previously granted Petitioner’s request to institute IPR as to claims 1-7, 15-22, 24-30, and 32-35, but denied its request as to claims 8-14 and with respect to certain grounds. In its Request for Rehearing, Petitioner argued that the Board abused its discretion in refusing to institute an IPR (1) with respect to Grounds 1 and 3 for claims 8-14, and (2) with respect to Grounds 2, 5, 7, and 9-11. Continue reading