Petitioner Allowed To Correct Clerical Mistake Of Submitting Unexecuted Declaration IPR2015-01332

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Takeaway: In absence of any evidence of prejudice, the Board may allow a party to correct a clerical error by filing a paper “out-of-time.”

In its Order, the Board granted Petitioner’s Motion to Correct a Clerical Mistake Regarding Petition for Inter Partes Review of the ’547 patent. Continue reading

Final Written Decision Confirming That Limitations Cannot Be Imported From The Specification IPR2014-00413

Takeaway: An understanding of claim language may be aided by the written description, but one cannot import into a claim, limitations that are not part of the claim.

In its Final Written Decision, the Board held that claims 1-19 of the ’894 patent are unpatentable. The Board also denied Patent Owner’s Motion to Recuse Judge McNamara. Continue reading

Denying Institution where Same/Substantially Same Prior Art/Arguments were Previously Presented IPR2015-00767

Takeaway: In determining whether to deny institution of an IPR petition under 35 U.S.C. § 325(d), the Board will focus on whether a later petition presents the same or substantially the same prior art or arguments, not whether the later petition includes new challenged claims.

In its Decision, the Board exercised its discretion to deny inter partes review under 35 U.S.C. § 325(d). The challenged ‘134 patent “describes a hybrid vehicle with an internal combustion engine, a traction motor, a starter motor, and a battery bank, all controlled by a microprocessor.” Petitioner challenged various claims of the ‘134 patent on three grounds of obviousness. This was Petitioner’s third attempt challenging certain claims of the ‘134 patent. Continue reading

Denying Institution Where Displayed Posters Were Not Found to be Printed Publications IPR2015-00720, IPR2015-00817

Challenge to Acorda Drug Patents by Kyle Bass Denied

Takeaway: Petitioner must persuade the Board that an alleged “printed publication” qualifies as prior art by submitting requisite evidence that the publication was sufficiently publicly accessible in the pertinent timeframe to qualify under § 102(b).

In its companion Decisions in IPR2015-00720 and IPR2015-00817, the Board denied institution of inter partes review of two Acorda Therapeutics pharmaceutical patents. The Board was “not persuaded that Petitioner has shown that the Goodman and Hayes posters constitute prior art.” Thus, Petitioner had “not established that there is a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the Petition[s], as required under 35 U.S.C. § 314(a).” Continue reading

Denying Institution Where the Same Prior Art and Arguments were Previously Presented CBM2015-00047

Takeaway: The Board has the discretion to deny a petition if either (a) the same or substantially the same prior art OR (b) the same or substantially the same arguments were previously presented in an earlier Petition.

In its Decision, the Board denied the Petition as to all challenged claims. No covered business method patent review was instituted.

In this proceeding, Petitioner had sought covered business method patent review of claims 1-3, 8-12, 14-18, 22, 24, 26-28, 30-32, 34, 41, 42, 44-46, 49, 50, 52-55, 57-66, 71-73, and 75 of the ‘110 patent. The ‘110 patent was challenged in a previous Petition for covered business method patent review, namely, Travelocity.com L.P. v. Cronos Techs., LLC, Case CBM2014-00082, but the Board had denied that previous Petition.

The Board exercised its discretion to decline review in the instant proceeding as per the case of Conopco, Inc. v. The Procter & Gamble Co., Case IPR2014. As noted by the Board, a Petition may be rejected if either (a) “the same or substantially the same prior art” OR (b) “[the same or substantially the same] arguments” were previously presented in an earlier Petition.

Following this authority, the Board noted that in the instant proceeding “Petitioner acknowledges that the same references are applied in the earlier and the present Petitions.” Thus, the Board concluded that “[o]n that basis alone, [it] may exercise [its] discretion and decline to institute covered business method patent review.”

The Board went on to additionally find that it was “persuaded that Petitioner asserts the same or substantially the same arguments in the present Petition that were asserted in the earlier Petition.” In this regard, the Board was not persuaded by Petitioner that the instant Petition presents different legal arguments, but instead, concluded that the instant Petition “simply recasts the facts in the context of the same legal arguments.”

Travelocity.com L.P., Priceline.com Inc., and Expedia, Inc. v. Cronos Technologies, LLC, CBM2015-00047
Paper 7: Decision Denying Covered Business Method Patent Review
Dated: June 15, 2015
Patent: 5,664,110
Before: Jennifer S. Bisk, James B. Arpin, and Lynne E. Pettigrew
Written by: Arpin
Related proceedings: Cronos Technologies LLC v. Travelocity.com L.P., Case No. 1:13-cv-01544-LPS (D. Del.); Cronos Technologies LLC v. Priceline.com, Case No. 1:13-cv-01541-LPS (D. Del.); Cronos Technologies LLC v. Expedia Inc., Case No. 1:13-cv-01538-LPS (D. Del.); and Travelocity.com L.P. v. Cronos Techs., LLC (Case CBM2014-00082)

Denying Last-Day Motion for Joinder IPR2015-00271

Takeaway: Waiting until the last possible day to file a motion for joinder without providing compelling rationale justifying any delay, lack of prejudice, or other factors, counsels in favor of denying the motion for joinder and the accompanying petition.

In its Decision, the Board denied Petitioner’s motion for joinder and Petition for inter partes review of claims 1-23 of U.S. Pat. No. 5,513,129. Petitioner sought to join challenges against the ‘129 patent in a pending proceeding against the ‘129 patent, Ubisoft Ent. SA v. Princeton Digital Image Corp., Case IPR2014-00635 and filed its motion for joinder one month to the day after the Ubisoft IPR was instituted. Continue reading

Motion for Joinder Granted IPR2015-00611

Takeaway: If the application that led to the challenged patent included a misstatement concerning the relationship between the application and an earlier application to which it attempted to claim priority, the Board may find that the claims in the challenged patent are not entitled to the earlier filing date, which may result in a finding that the claims are unpatentable over intervening prior art.

In its Decision, the Board instituted an inter partes review of claims 1-31 of U.S. Patent No. 7,643,168 and granted Petitioner’s Motion for Joinder.

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Denying Patent Owner’s Motion to Terminate IPR2014-00936

Takeaway: The relevant date for determining whether a non-party is a real party-in-interest is the filing date of the petition.

In its Decision, the Board denied Patent Owner’s Motion to Terminate for failure to identify Southwire Company, LLC (“Southwire”) as a real party-in-interest. The Board stated that the issue is whether Patent Owner has rebutted the presumption that Southwire was not a real party-in-interest at the time the Petition was filed. Continue reading

Authorizing Filing of Motion to Disqualify Expert IPR2015-00503

Takeaway: Disqualification of an expert is a drastic remedy that requires the moving party establish that it is objectively reasonable to believe that it had a confidential relationship with the expert, and that it disclosed confidential information to the expert that is relevant to the current proceeding.

In its Order, the Board ordered that Patent Owner is authorized to file a motion to disqualify Petitioner’s expert Dr. Suryanarayanan on the basis of conflict of interest. Petitioner had filed a Petition for inter partes review of claims 1-9 of the ‘190 patent, which was supported by the Declaration of Dr. Suryanarayanan. After trial was instituted, Patent Owner filed an objection to the Suryanarayanan Declaration. The Board held a telephonic conference, and then issued this written order. Continue reading

Denial of Institution Where Unsworn Declaration Given No Weight CBM2015-00053

Takeaway: The Board will not give any weight to declarations that are not sworn under penalty of perjury and do not indicate that the witness was warned that willful false statements are punishable by fine or imprisonment.

In its Decision, the Board determined that Petitioner did not demonstrate that U.S. Patent No. 6,292,547 is a covered business method patent and therefore denied a petition to institute a covered business method (CBM) review of claims 11 and 18 of the ’547 patent. The ’547 patent relates to a telephonic-interface statistical analysis system. Petitioner contended that the challenged claims are unpatentable under 35 U.S.C § 101 and under § 103 over Jordan and Michlin.

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