Order Providing Guidance for a Motion to Amend IPR2015-00040


Takeaway: In a motion to amend, it is not the patent owner’s duty to show patentability over all existing prior art. However, if a petitioner identifies prior art in its opposition, then the burden of persuasion remains with the patent owner to demonstrate patentability of the amended claims.

In its Order by an expanded panel, the Board provided further guidance regarding filing of motions to amend. Patent Owner requested a conference call to discuss its intent to file a motion to amend. The Board instructed Patent Owner to follow all of the requirements articulated in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013). The Board then clarified the statement in Idle Free that the patent owner must show patentable distinction over the prior art of record and prior art known to the patent owner.

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Granting Institution Despite Settlement Agreement IPR2015-00483

Takeaway: If parties to a settlement agreement wish to prevent filing of inter partes review petitions following the dismissal of their District Court actions, they may do so by including explicit prohibitions on such filings.

In its Decision, the Board found that Petitioner had established a reasonable likelihood that it would prevail with respect to each of the challenged claims (i.e., claims 12-19, 32, 34, 46, and 48) of the ‘554 patent. Accordingly, the Board instituted the requested inter partes review for each of these claims.

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Final Written Decision Upholds Patentability of Claims and Denies Motion to Exclude IPR2014-00129

Takeaway: Under Fed. R. Evid. 901(b)(4), evidence may satisfy the authentication requirement based on its “appearance, contents, substance, internal patterns, or other distinctive characteristic of the item, taken together with all the circumstances.”

In its Decision, the Board found that while Petitioner had shown by a preponderance of the evidence that relied-upon Gittleman reference was a publication under U.S. patent law, Petitioner had not shown by a preponderance of the evidence that claims 5 and 13 are unpatentable. Accordingly, the Petition was denied. Patent Owner’s Motion to Exclude was denied as well.

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Denying Motion for Live Testimony to Respond to Lack of Nexus Assertions IPR2014-00687

Takeaway: The Board is unlikely to grant a request for live testimony at oral hearing where live direct and cross-examination would not provide help to the Board in determining the appropriate weight to give testimonial evidence.

In its Order, the Board granted the parties’ requests for oral argument in the three related proceedings. The Board also denied Patent Owner’s request to offer live testimony from Mr. Robin Walker, its former Vice President of Sales and Marketing Director, because the Board was not persuaded that the testimony “would further the efficient administration of these proceedings or is necessary in the interest of justice” under 37 C.F.R. § 42.5. Continue reading

Decision Authorizing Motion for Sanctions Based on Ex Parte Communication CBM2014-00159

Takeaway: Any ex parte communication between Patent Owner and Petitioner’s expert outside the presence of counsel is wholly inappropriate.

In its Decision, the Board authorized Petitioner to file a motion for sanctions against Patent Owner. Also, the Board prohibited Patent Owner from contacting Petitioner’s expert, Dr. Sadeh, without prior Board authorization.

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Denying Institution for Failure to Identify Real Parties in Interest IPR2015-00480

Takeaway: For the requirement that a petition identify all real parties-in-interest, the Board generally accepts a petitioner’s initial identification, but it is a rebuttable presumption. When a patent owner provides sufficient evidence that brings into question the accuracy of the identification, the burden remains with petitioner to establish that it has complied with the statutory requirement.

In its Decision, the Board did not institute review because the Petition was incomplete. After Patent Owner raised valid questions concerning the proper identification of each real party-in-interest, Petitioner did not attempt to rebut Patent Owner’s contentions and thus failed to meet its statutory burden. Given the timing, the Board further stated that the Petition could not be re-filed because the Petition would no longer fall within the one-year period specified by 35 U.S.C. § 315(b). Continue reading

Final Written Decision IPR2014-00310

Some of the challenged claims held to be not unpatentable.

Takeaway: A prior art reference need not use the same naming conventions as used by the challenged claims to anticipate or render obvious those claims.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claims 1 and 3-6 of the ’371 patent are unpatentable. The Board also determined, however, that Petitioner had not demonstrated that claims 2 and 7-10 are unpatentable. The ’371 patent “is directed to on-chip circuits for the testing and diagnosis of problems in an integrated circuit, with the circuits used to observe the internal workings thereof.” Petitioner challenged the claims under two grounds—anticipation by Levine of claims 1-3 and 5-10 and obviousness in view of Levine and Whetsel of claim 4. Continue reading

Granting Institution of One Asserted Ground of Unpatentability IPR2015-00506

Denied grounds did not adequately establish obviousness and, in one instance, relied upon a document not provided with the petition.

Takeaway: Institution of a ground of unpatentability relying upon a prior art published patent application may be denied where, instead of providing a copy of the published application, a copy of the non-prior art patent that issued from the published application is provided with the petition.

In its Decision, the Board found that Petitioner had shown that there is a reasonable likelihood that it would prevail with respect to the challenged claims 1-5 of the ‘973 patent, and instituted trial. The ‘973 patent is directed to light emitting panel assemblies. Petitioner challenged claims 1-5 on five grounds. Continue reading

Denying Institution for Failing to Articulate a Reason to Modify IPR2015-00355

Takeaway: Institution is likely to be denied when a petition fails to articulate a reason to modify or combine known elements in the fashion claimed and leaves it to the Board to ascertain what gaps to fill.

In its Decision, the Board denied institution of inter partes review of claims 1-5, 8, 9, 15-19, 22, 23, 26-30, 33, and 34 of the ’053 patent. The ’053 patent relates to digital rights management (DRM). In particular, it addresses the problem of downstream distribution by providing “meta-rights” that have the ability to create other user rights. Continue reading

Denying Institution due to Redundacy with Other Proceeding IPR2015-00471

Takeaway: The Board may exercise its discretion in denying institution of a serially-filed petition where the petitioner does not explain how the newly-asserted grounds add substantively to or can be meaningfully distinguished from the grounds of a previous petition.

In its Decision, the Board exercised its discretion under 35 U.S.C. §§ 315(d), 325(d) in denying institution of inter partes review of the ’115 patent. In particular, the Board found that Petitioner failed to show that any grounds asserted in the instant Petition “adds substantively to the grounds on which [the Board] instituted inter partes review in Case IPR2015-00470.” Continue reading