Granting Motions to Seal Tailored to Confidential Information IPR2014-00488, IPR2014-00607

Takeaway: The standard for granting a motion to seal is “for good cause,” under which the movant bears the burden of proof in showing entitlement to the requested relief, and must explain why the information sought to be sealed constitutes confidential information.

In its Decision, the Board granted Medtronic’s motion to seal certain papers. Specifically, Medtronic moved to permanently seal three documents that were filed under seal: (1) Medtronic’s response to Bosch’s request for production and interrogatory; (2) certain portions of the Declaration of Peter Shimabukuro; and (3) a portion of its Opposition to the Motion to Terminate. Medtronic argued that these papers contain confidential details concerning Medtronic’s acquisition of Cardiocom. Bosch did not oppose or join Medtronic’s motion, taking no position. Continue reading

Final Written Decision Finding Most Claims Anticipated IPR2014-00476

Takeaway: That the two prior art disclosures would not have been combined by businessmen for economic reasons does not necessarily mean that those skilled in the art believed that some technological incompatibility prevented their combination.

In its Final Written Decision, the Board found that Petitioner had sufficiently demonstrated that claims 1-5, 10, 12-19, and 21 of the ‘524 patent are unpatentable. At the same time, the Board found that Petitioner had failed to establish sufficiently that claims 6 and 9 of the ‘524 patent are unpatentable.

Continue reading

Final Written Decision Finding Claim Limitation Not Inherently Disclosed IPR2014-00360

Takeaway: To establish inherent disclosure of a limitation in a prior art reference, a petitioner must show that the limitation is necessarily present in the prior art.

In its Final Written Decision, the Board found that Petitioner had not established by a preponderance of the evidence that any challenged claim of the ’216 patent is unpatentable, and therefore dismissed the contingent Motion to Amend. The Board also denied the parties’ Motions to Exclude Evidence, granted Patent Owner’s Motion for Entry of Protective Order, granted-in-art Patent Owner’s First Motion to Seal, and granted Patent Owner’s Second Motion to Seal. Continue reading

Denying Rehearing of Decision Not To Institute Trial Based on Claim Construction IPR2015-00249

Board's claim construction based on allegedly indefinite industry standard not improper.

Takeaway: A claim construction incorporating an industry standard that may differ depending on the application of the claimed invention is permissible and will not necessarily render a claim indefinite.

In its Decision, the Board denied a request for reconsideration of the Board’s Decision not to institute trial with regard to claims 20-23 of the ’468 patent (while instituting trial for claims 1-3, 7, and 9). Claims 20-23 had been challenged on two grounds of obviousness. Petitioner argued that “the Board’s decision not to institute was based upon a legally erroneous construction of the term ‘aseptic.’” Further, even using the Board’s construction of “aseptic,” Petitioner argued that the Board’s decision was based on erroneous factual findings. The Board denied Petitioner’s request. Continue reading

Denying Request to File Corrected Patent Owner Response Removing Citations to Expunged Exhibit CBM2014-00133, 135

Takeaway: Arguments that rely upon statements made in an exhibit that is later expunged would be considered attorney argument, which is to be given little or no weight, such that there would be no need for cross examination of the person who made the statements.

In its Order, the Board granted Patent Owner’s request to expunge an exhibit and denied Petitioner’s request that Patent Owner be ordered to file a corrected Patent Owner Response. Continue reading

Final Written Decision Canceling all Challenged Claims and Denying Entry of any Substitute Claims IPR2014-00242

Takeaway: To demonstrate written description support for proposed substitute claims in a motion to amend, a patent owner should provide explanation why a person of ordinary skill in the art would have recognized that the inventor possessed the claimed subject matter as a whole; citations to portions of the original disclosure alone would be insufficient.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend as to the request to cancel claims 1-3, 5, and 6 of the ’047 patent. However, the Board denied the Motion to Amend as to the request to add proposed substitute claims 7-11. Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable as Obvious

Takeaway: Upon determining the level of ordinary skill in the art, the Board concluded that the challenged claims were unpatentable by a preponderance of the evidence.

In its Final Written Decision, the Board held that claims 8-11, 14, and 18 of the ’566 patent are unpatentable. The ’566 patent relates to a computer with a display for user interaction before, during, and after a game. Continue reading

Granting Institution Based on Means-Plus-Function Construction CBM2015-00061

Takeaway: Where a claim is found “abstract” under step 1 of the Alice analysis, the claim may be transformed into a patent-eligible application of an abstract idea under step 2 of the Alice analysis when a claimed means function is supported by an adequate algorithmic structure in the specification that confines claim coverage.

In its Decision, the Board found that Petitioner had shown a reasonable likelihood that it would prevail with respect to claims 1 and 2 of the ‘387 patent under 35 U.S.C. §§ 112 ¶ 2, 102(b), and 103(a). The ‘387 patent “generally relates to the conditional trading of securities, such as convertible bond ‘swaps,’ risk arbitrage, and combinations thereof in both listed and over-the-counter markets, via one or more electronic networks.” Petitioner challenged claims 1 and 2 under various grounds, including §§ 101, 102(b), 103(a), and 112 ¶ 2. Continue reading

Final Written Decision Finding Claims Unpatentable as Obvious Over Evidence of Copying

Square, Inc. v. REM Holdings 3, LLC

Takeaway: More than mere copying is necessary to make the action significant to the determination of obviousness.

In its Final Written Decision, the Board held that claims 1, 2, 6, 7, and 10-17 of the ’946 patent are unpatentable and that Petitioner had not shown the requisite burden of proof regarding the unpatentability of claims 3-5, 8, and 9. Continue reading