Granting Motion for Joinder IPR2015-00568


Takeaway: The Board granted a Motion for Joinder where the proceeding that the Petitioner was going to join was in the process of being settled and terminated, but a Motion for Termination had not been filed.

In its Decision, the Board granted Petitioner’s Motion for Joinder and granted institution of inter parties review as to the challenged claim 7 of the ’811 Patent. Petitioner filed its Petition along with a Motion for Joinder requesting to join 505 Games Interactive, Inc. v. Babbage Holdings, LLC, IPR2014-00954 (“the ’954 proceeding”). The Board had instituted the same grounds of unpatentability over the same claim raised in Petitioner’s Petition. Continue reading

Denying Institution IPR2014-01179


Takeaway: For a proposed obviousness ground to be instituted, the Petition must include an explanation of how the teachings of the references might be combined to arrive at the claimed invention.

In its Decision, the Board denied Petitioners’ request to institute inter partes review of claims 1-36 of the ’048 patent, because the Petition does not establish that there is a reasonable likelihood that Petitioner will prevail on demonstrating that any of the claims are unpatentable. The ’048 patent generally relates to “a computer network that provides automatic protection switching to re-route data packets in the event of a network link failure.” Continue reading

Final Written Decision IPR2013-00499


Takeaway: In a case where the Patent Owner has filed neither a Preliminary Response nor a Patent Owner Response, the Board will base its Final Written Decision on the information of record, including the submitted testimonial evidence and the positions advocated by Petitioner.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that all claims of the ’429 patent for which trial was instituted are unpatentable. The claims for which trial had been instituted were claims 15–21, 23–26, 29–32, 34, 36, 37, 39, 41–50, 52–58, 60, 62–67, and 70–76. Continue reading

Decision Granting Revised Pro Hac Vice Motion IPR2014-01002


Takeaway: A Motion for Pro Hac Vice Admission can be supported by evidence of the attorney’s familiarity with the subject matter of the proceeding and of the attorney’s good standing of the state bar in which the attorney has been admitted.

In its Decision, the Board granted Patent Owner’s Revised Motion for Pro Hac Vice admission of counsel.  In particular, the Board reversed a previous Decision and concluded that attorney Thomas E. Lynch, III was authorized to serve as back-up counsel representing Patent Owner in this proceeding. Continue reading

Denying Rehearing IPR2014-00605


Takeaway: A party cannot file a separate paper responding to a Statement of Facts without authorization from the Board. Such a response should be included in a Response or Reply, and will count against the page limits if it is more than a mere listing of whether the facts are admitted or denied.

In its Decision, the Board denied Petitioner’s Request for Rehearing the Board’s Order expunging a paper filed by Petitioner entitled: “Petitioner’s Response to Patent Owner’s Statement of Facts.” In a Request for Rehearing, the movant must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) “identify the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). Continue reading

Granting Motions to Submit Corrected Translations IPR2014-01555, 01556, 01558


Takeaway: The Board explained that attorneys should be able to recognize submissions of documents that “technically” do not comply with the rules, but which cause no prejudice, and stipulate to file a corrected document that saves all involved time and expense.

In its Decision, the Board granted Petitioner’s motions to accept verified translations, which were opposed by Patent Owner. Continue reading

Granting Joinder IPR2014-00508, 509


Takeaway: Joinder may be appropriate, even when oral hearing in the previously instituted proceeding has already been held, where the delay was not in the petitioner’s control and where the petitioner was diligent and timely in filing its motion for joinder.

In its Decisions in IPR2014-00508 (the ’508 IPR) and IPR2014-00509 (the ’509 IPR), the Board granted Petitioner’s Motion for Joinder such that the ’508 IPR was instituted and joined with IPR2013-00531 and the ’509 IPR was instituted and joined with IPR2013-00533.

Petitioner had filed two Petitions for inter partes review, each Petition challenging one of the ’563 patent and the ’531 patent. After the Petitions were filed, Patent Owner produced a prior art reference (Asada) to Petitioner in the related district court litigation. As the Board noted, Petitioner’s Motions for Joinder were filed within one month after institution of the two previously-filed Petitions. The proceedings involved the same parties and the same challenged patents. With respect to the challenged claims and the asserted prior art, the ’508 IPR and the ’509 IPR challenged claims that depend from those challenged in the earlier-filed Petitions and only the Asada reference was being added.

Patent Owner first argued that joinder was not appropriate because new patentability analyses and substantive arguments beyond those of the previous proceedings were being presented. However, the Board noted that Petitioner “moved to limit the Petition to claims 1, 20, and 21” in the ’508 IPR (claims 1, 18, and 19 in the ’509 IPR) and that only two grounds were being instituted in each new IPR. Thus, the Board held that the grounds in the ’508 and ’509 IPRs “do not go substantially beyond those on which trial was instituted” in the prior respective proceeding.

Patent Owner also argued that joinder was inappropriate because “Petitioner did not propose a modified schedule, nor did it explain how the schedule could be reconciled with the schedule” in the prior proceedings. The Board acknowledged that “there is no way to reconcile the schedule in the instant proceeding with that in IPR2013-00531 [and IPR2013-00533] given that oral hearing has already been held in IPR2013-00531 [and IPR2013-00533].” However, the Board noted, the delays were outside of Petitioner’s control.

Patent Owner also argued that Petitioner had not established how joinder would promote efficiency and that several instituted claims were being re-challenged. However, the Board noted, as Patent Owner acknowledged, trial was being instituted on a limited number of claims and grounds.

The Board concluded that joinder was appropriate. As the Board explained: “The same patent and parties are involved in both proceedings. There is an overlap in the cited prior art. Petitioner has been diligent and timely in filing the Motion. And while some adjustments to the schedule will be necessary, many of those adjustments were due to the procedural history of this proceeding, and beyond Petitioner’s control.” Because oral hearing had already occurred, no scheduling order was issued. Instead, the Board ordered the parties to meet and confer regarding an expedited schedule in advance of a conference call to be held with the Board.

In the dissenting opinion, Judge Fitzpatrick, joined by Judges Bisk and Weatherly, argued that Section 315(c) “does not authorize joinder of proceedings.”

Target Corp. v. Destination Maternity Corp., IPR2014-00508, IPR2014-00509
Paper 31 (IPR2014-00508) Paper 30 (IPR2014-00509): Decision on Motion for Joinder
Dated: February 12, 2015
Patents: RE43,563 E (IPR2014-00508); RE43,531 E (IPR2014-00509)
Before: Michael P. Tierney, Lora M. Green, Joni Y. Chang, Thomas L. Giannetti, Jennifer S. Bisk, Michael J. Fitzpatrick, and Mitchell G. Weatherly
Written by: Green
Dissent by: Michael J. Fitzpatrick joined by Jennifer S. Bisk and Mitchell G. Weatherly
Related Proceeding: IPR2013-00531; IPR2013-00533

Denying Institution IPR2014-01490


Takeaway: A claimed compound may not be obvious to try where the prior art discloses several classes that encompass a significant number of compounds.

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 challenged claim. The ’863 patent “relates to a method of using hop acids for increasing food and energy uptake from feed by livestock.”

Patent Owner first argued that the Board should exercise its discretion and deny the Petition under 35 U.S.C. § 325(d) because the newly-asserted prior art is cumulative of prior art considered during the original prosecution of the ’863 patent. However, the Board declined.

Turning to claim construction, the Board stated that claims in an unexpired patent are given their broadest reasonable construction in light of the specification of the patent. Petitioner proposed constructions for several limitations, and Patent Owner argued that the claim terms should be given their plain and ordinary meanings. The Board adopted Petitioner’s proposed constructions.

The Board then addressed the asserted grounds of unpatentability. First, Petitioner argued that all challenged claims were obvious over Krishna, but the Board found that Petitioner had not established a reasonable likelihood of prevailing on this ground. The Board agreed with Patent Owner that Krishna failed to teach “hop acids, and not other components of the spent hops preparations, as causing methane reduction.” The Board also agreed with Patent Owner that the use of hop acids for methane reduction was not obvious to try because Krishna identifies four classes of agents “encompassing a significant number of compounds,” instead of identifying four agents as argued by Petitioner. The Board held that Petitioner failed to establish “why an ordinary artisan, knowing the teachings of Krishna, would have considered it obvious to administer an effective amount of hop acid capable of decreasing the production of unoxidized carbon sources and unoxidized carbon waste, as recited in claim 1.” The Board found that Petitioner had not established obviousness of claims 2-8 for the same reasons.

With respect to obviousness over Krishna, King, Johnson, and Maye, Petitioner argued that, “to the extent Krishna by itself is insufficient to guide one of ordinary skill in the art regarding an effective amount of hop acids, King, Johnson, and Maye provide additional teachings to that end.” However, because the Board was not persuaded “that Krishna suggests hop acids, and not other components of the spent hops preparations, as causing the claimed effects,” the Board was also not persuaded that “a skilled artisan would have had a reason to combine the teachings of Krishna with those of King, Johnson, and Maye.”

The Board then addressed the asserted obviousness over Siefker, 21 C.F.R. § 582, Bergen, Beuchat, Maye, and Ting. The Board noted that Petitioner relied upon large portions of its expert declaration to support otherwise conclusory statements, citing to nearly 20 pages in one instance and 34 pages in another instance. This practice violates the rule against incorporation by reference. 37 C.F.R. § 42.6(a)(3). Even considering the incorporated material, the Board was nevertheless not persuaded that a skilled artisan “would have been motivated to consider hop acids to replace ionophore antibiotics.” In addition, noting that Petitioner cited extensively to the specification of the ’863 patent, the Board stated that “[t]o the extent Petitioner uses the ’863 patent Specification, rather than the cited references, as a roadmap to evaluate the obviousness of the challenged claims, Petitioner relies on improper hindsight.” Therefore, the Board concluded that Petitioner failed to establish a reasonable likelihood of prevailing.

S.S. Steiner, Inc. v. John I. Haas, Inc., IPR2014-01490
Paper 7: Decision Denying Institution of Inter Partes Review
Dated: March 16, 2015
Patent: 8,197,863
Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Zhenyu Yang
Written by: Yang
Related Proceedings: IPR2014-01491

Denying Institution IPR2014-01378


Takeaway: The Board will likely deny institution of inter partes review where means-plus-function limitations are not amenable to construction for lack of corresponding structure in the specification, and a petitioner’s proposed construction of “any suitable structure” will likely be unpersuasive.

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 14 and 15 of the ’321 patent. The Board held that the claims were not amenable to construction and therefore could not reach “a determination on the reasonable likelihood that SpaceX would prevail on the ground asserted in the Petition.” The ’321 patent relates to “landing and recovering [a reusable launch vehicle] at sea.” Continue reading

Final Written Decision IPR2013-00602


Takeaway: Arguments related to the patentability of a challenged claim that are not commensurate in scope with the claimed invention are not persuasive.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that claims 1-6 are unpatentable and denied Patent Owner’s Motion to Amend. The ’568 patent generally relates to “radio communications systems, such as cellular or satellite systems, that use digital traffic channels in a multiple access scheme, such as time division multiple access (‘TDMA’) or code division multiple access (‘CDMA’). “ Continue reading