Motion for Additional Discovery Authorized IPR2015-01866-68


Takeaway: Providing specific information gleaned from a related district court litigation that suggests that additional discovery may exist to show that there are other real parties-in-interest will increase a patent owner’s chances of getting authorization to file a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery. Patent Owner requested authorization to file a motion for additional discovery limited to the issue of whether LG Display or LG Electronics and Petitioner are privies. Patent Owner stated that it learned recently in the related district court litigation, to which Petitioner is not a party, of evidence of a supply agreement between Petitioner and LG Display or LG Electronics that may contain indemnification obligations. Patent Owner also referenced admissions of payment made in conjunction with discovery responses that may substantiate these contentions.

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Decision Denying Institution of Inter Partes Review IPR2015-01329

Takeaway: A petitioner’s obviousness argument should be consistent with its claim construction proposal.

In its Decision, the Board declined to institute inter partes review as to any of the challenged claims (1, 4, and 7) of the ’586 Patent. The ’586 Patent is directed to a method for managing one or more networked computer systems (an “enterprise”).

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Order Denying Authorization to File Reply to Preliminary Response IPR2015-01505, -01506, -01507

Takeaway: The rules prohibit the filing of a motion without prior authorization. Because e-mails to the Board may act as an attempt to circumvent this rule, parties should limit e-mail communications to the Board to requests for a conference call, including only a short explanation as to why the party requests the call, and avoid including substantive discussions.

In its Order, the Board ordered that no reply is authorized to be filed and that “except as otherwise authorized in the Rules of Practice in Patent Cases, 37 C.F.R. § 42 et. seq., no motions or other substantive correspondence may be filed in these proceedings without prior, express authorization.” Continue reading

Institution of Post-Grant Review of a Patent Issuing from a Transition Application PGR2015-00017

Takeaway: The inquiry into whether a patent issued from a transition application is subject to the AIA first inventor to file statutory provisions and, thus, available for post-grant review turns on whether the patent contains a claim that has an effective filing date on or after March 16, 2013.

In its Institution Decision, the Board instituted Post-Grant Review of the ‘395 patent. The ‘395 patent discloses “a method and apparatus to identify at least one component from a plurality of components in a fluid mixture,” including “a detector apparatus which detects and identifies selected components” and “a laser which emits a laser beam which damages or kills selected components of the plurality of components.” The Board found that claims 1-14 of the ‘395 patent were more likely than not unpatentable. Continue reading

Decision Denying Institution In Part Where Petitioner Had Not Alleged Unpatentability With Sufficient Particularlity PGR2015-00011

Takeaway: A single ground including alternative language that could be interpreted as actually presenting multiple grounds may not identify with sufficient particularity each ground on which the challenge is based.     

In its Decision, the Board concluded that Petitioner had established it more likely than not that claims 1-13 of the ‘623 patent are unpatentable as having been obvious over one of the cited references; thus, the Board instituted post-grant review of these claims with respect to that reference. The Board did not institute post-grant review with respect to any other reference or combination of references asserted in the Petition, however.

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Partially Granted Request For Rehearing Of Final Written Decision IPR2014-00312

Takeaway: The Board may ignore a new argument in a request for rehearing that a previously asserted prior art reference can provide evidence of the level of ordinary skill in the art as part of an argument for unpatentability of a claim.  

In its Decision, the Board granted Petitioner’s Request for Rehearing of claims 4 and 9, but denied the Request for Rehearing for claims 3, 5, and 8 of the ’946 patent. Continue reading

Instituting Review of Challenged Claims CBM2015-00091

Takeaway: The Board was persuaded to follow similar claim construction positions as well as its previous determination related to patent eligibility made in previous proceedings before the Board related to the same and similar patents.

In its Decision, the Board instituted a covered business method patent review of claims 12-16 of the ’850 patent, because it determined that Petitioner had demonstrated that it is more likely than not that the challenged claims are unpatentable on the grounds below. Continue reading

Additional Discovery Regarding Real-Party-In-Interest Denied IPR2015-01046

Takeaway: Merely alleging that funds from a hedge fund are being used in a proceeding, without more, is insufficient to constitute more than a mere possibility that something useful will be discovered as evidence of a real-party-in-interest.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. The Board had previously authorized Patent Owner to file a Motion for Additional Discovery regarding whether additional parties should have been named as a real-party-interest (RPI) in the instant proceeding. The Board had also authorized Petitioner to file an Opposition thereto. Continue reading

Authorization To File Motion For Late Submission of Supplemental Information After Oral Argument IPR2015-00306

Takeaway: A motion for late submission of supplemental information under § 42.123(b) must show why the supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests of justice.

In its Order, the Board authorized Patent Owner to file a Motion for Late Submission of Supplemental Information.     Continue reading