Denying Institution Because of Insufficient Explanation of Why POSITA Would Have Found the Invention Obvious IPR2015-00167

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Takeaway: A declaration that alleges a particular feature would have been obvious to an ordinary artisan but fails to provide sufficient explanation for why it would have been obvious to the ordinary artisan, may not be afforded any consideration by the Board regarding the obviousness of that feature.

In its Decision, the Board denied institution of inter partes review of claims 13, 33, 39, 45, 52, 59, 66, 73, 83, 89, 95-108, 117, and 118 of the ’167 patent because Petitioner did not demonstrate a reasonable likelihood of prevailing with respect to any of the challenged claims. Continue reading

Publication Date on Non-patent Literature Found to Meet Exception to Hearsay Rule in Final Written Decision for IPR2014-00527

Takeaway: The assignment of a publication date in the copyright line of an IEEE publication has equivalent circumstantial guarantees of trustworthiness as with other exceptions to the hearsay rule.

In its Final Written Decision, the Board determined that Petitioner had met its burden of showing that each of challenged claims 1-22 of the ’674 patent claims is unpatentable. The Board denied Patent Owner’s Motion to Exclude, as well. The ’674 patent relates to the implementation of “security protocols on transmissions over wired and wireless portions of the network.” Continue reading

Granting Motion for Additional Discovery IPR2014-01005

Takeaway: The movant is not always required to show a nexus between the additional discovery and the claims of the patent at issue when moving for additional discovery.

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery pertaining to its assertions of secondary considerations of nonobviousness, particularly regarding copying.  The Board also granted Patent Owner’s Motion to Seal the Motion for Additional Discovery and a Joint Motion to Enter Protective Order. Continue reading

Denying Motion for Live Testimony at Oral Argument IPR2014-00599

Takeaway: A request to present live testimony at oral hearing may be denied if the Board determines that observation of the witness’s demeanor would not be helpful in assessing the reliability of evidence, such as when the witness is an expert who will testify about the contents of third party scientific literature.

In its Decision, the Board denied Petitioner’s request to present live testimony from its expert witness at the hearing in this proceeding. Continue reading

Granting in Part Institution CBM2015-00010

Takeaway: Computer-related limitations that require nothing more than the routine and conventional use of a computer are not meaningful limitations that can render otherwise abstract claims patent eligible.

In its Decision, the Board instituted a covered business method patent (CBM) review proceeding of claims 1-60 of U.S. Patent No. 8,402,281 B2. The ’281 patent relates to protecting data against unauthorized access. Continue reading

Denying Motion to Compel IPR2014-00571

Takeaway: Questioning a witness about an exhibit to attempt to question the witness’s credibility without any basis for such questioning is akin to a “fishing expedition” and may be prohibited by the Board.

In its Order, the Board denied Patent Owner’s request to retake the deposition of Petitioner’s witness.  During the deposition of Petitioner’s witness a dispute arose concerning questioning the witness with respect to an exhibit, which was a marked-up copy of a manual that is not asserted as prior art in this proceeding.  Patent Owner sought to rely on the exhibit to question the witness’s credibility by ascertaining whether the questioning regarding the exhibit would lead to inconsistencies with respect to the witness’s testimony.  However, Patent Owner could not provide the Board with a sufficient basis for questioning the witness’s credibility in the first place or for questioning the witness at all regarding the exhibit.  The Board found that this questioning was akin to a “fishing expedition” and in conflict with 37 C.F.R. § 42.1(b), which requires the Board to resolve the proceeding in a just, speedy, and inexpensive manner.  Therefore, the Board determined that there was not sufficient reason to take the deposition of the witness again. Continue reading

Denying Request to File Motion to Compel Deposition CBM2014-00176

Takeaway: An inventor oath submitted with a patent application is not “affidavit testimony” and does not entitle the petitioner to cross examine the inventor. 

In its Order, the Board denied Petitioner’s request to file a motion to compel the deposition testimony of a named inventor of the ’807 Patent and denied Patent Owner’s request to file a motion for sanctions. Continue reading

Denying institution For Not Qualifying for Covered Business Method Review CBM2015-00019

Takeaway: When determining whether a patent is eligible for covered business method patent review, the focus is on what the patent claims.

In its Decision, the Board denied institution of the Petition as to all challenged claims of the ’279 patent. Consequently, a Covered Business Method patent trial was not instituted. The Petition had sought covered business method patent review of claims 1–4, 6–11, 13–21, 24, 27–35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63 of the ’279 patent. After Patent Owner had shown that it had filed a statutory disclaimer of claims 19, 24, 27, 33, 34, 53, 58, 61, 67, and 68 in the USPTO, the Board indicated that no covered business method patent review would be instituted for these disclaimed claims. Thus, the focus of the Board’s Decision was on whether to instituted covered business method patent review of remaining claims 1–4, 6–11, 13–18, 20, 21, 28–32, 35, 37, 38, 42, 43, 47–49, 54, 55, 62, and 63. Continue reading

Decision Denying Institution IPR2015-00413

Apple Inc. v. E-Watch, Inc.

Takeaway: The Board is not bound by a decision by an Examiner on whether a declaration presented in prosecution sufficiently established that an invention predated a prior art reference.

In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims, claims 1-3, 5-7, 12, and 14. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” Continue reading

Denying Institution IPR2015-00039, 42, 44, 45, 47

Takeaway: In determining whether a party is a real party-in-interest to a proceeding, the Board focuses on the relationship between the party and the proceeding (e.g., the degree to which the party exercised, or could have exercised, control over the proceedings), not the relationship between the potential real party-in-interest and the patent owner.

In its Decision, the Board determined that the Petitions did not identify all real parties in interest, and that Petitioner had not established good cause for late correction of the Petitions or that such correction would be in the interests of justice). The Board, therefore, denied the Petitions. Continue reading