Claims Unpatentable and Motion to Amend to Correct Typographical Errors Denied in Final Written Decision IPR2014-01278

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Takeaway: A motion to amend to correct typographical errors is not proper if such an amendment does not respond to a ground of unpatentability involved in the trial as required under the rules.

In its Final Written Decision, the Board found all challenged claims of the ‘222 patent unpatentable under 35 U.S.C. § 103(a) and denied Patent Owner’s Motion to Amend. The ‘222 patent “relates to information technology (‘IT’) management and the collection of data from networks that span a wide range of institutions, including correctional facilities, without regard to which jurisdiction the source of data belongs.” Continue reading

Denying Institution of CBM Asserting Patent Ineligibility and Prior Art Under Section 102(e) CBM2015-00167

Takeaway: A reference that is prior art under only § 102(e) may not be asserted in a CBM patent review.

In its Decision, the Board denied institution of covered business method patent review of claims 1-9 of the ‘792 patent. “The ’792 patent relates to a modified automated teller machine (‘ATM’) or terminal that allows a customer to obtain cash from an account via various processes such as an ATM process or a point-of-sale (‘POS’) process using both debit cards and credit cards.” Continue reading

Final Written Decision Finding Challenged Claim Unpatentable IPR2014-01158

Takeaway: If commercial success is based upon licensing, the patent owner must comment on whether the licenses were entered into because of ongoing or threatened litigation in order to allow the Board to properly evaluate the licenses.

In its Final Written Decision, the Board determined that Petitioner had shown that all challenged claims of the ’888 Patent are unpatentable.   The ’888 Patent discloses an audio recording device that the specification terms a “music jukebox.”

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Granting Institution Despite Request for Consideration of Previously-Submitted Prior Art IPR2015-01557

Takeaway: The Board may exercise its discretion to deny asserted grounds of unpatentability for reasons of administrative necessity and to ensure timely completion of an instituted proceeding.

In its Decision, the Board determined Petitioner had established a reasonable likelihood of establishing that claims 10 and 14 of the ’188 patent are unpatentable. The ’188 patent “is directed to a memory card that includes both a device connector, conforming to a device connection standard, and a host connector, conforming to a host connection standard.” Continue reading

Denying Request for Rehearing IPR2014-00697

Takeaway: A teaching in the prior art that an asserted combination would result in a decrease in performance is not necessarily a teaching away that would result in a finding of nonobviousness.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1, 2, 4, 6, 7, 9, 11, 13-20, 23, 25, and 26 of the ’627 patent unpatentable. Continue reading

Granting Stay of Reissue Application CBM2015-00147

Takeaway: Stay of a reissue application may be appropriate where the challenged claims in a proceeding before the Board are included in the reissue application and where examination of the reissue application has not begun.

In its Order, the Board stayed examination of reissue application 14/803,629 pursuant to 37 C.F.R. § 42.3(a). The reissue application includes the original claims of the ’854 patent and was filed by Patent Owner on July 20, 2015. Continue reading

Parties’ Unauthorized Mandatory Notices Submissions Expunged IPR2015-00040

Takeaway: The filing of an appropriate notice concerning a related proceeding requires prior Board authorization and is not a briefing opportunity to advocate a desired conclusion in the matters pending before the Board.

In its Order, the Board expunged the parties’ Supplemental Mandatory Notices as constituting unauthorized papers. The Board further scheduled a joint conference call “to discuss the matter of mandatory notices as they pertain to a related proceeding.” Continue reading

Denying Institution where Petition was Found to Raise Previously-Presented Arguments IPR2015-01511

Takeaway: Arguments and citation to prior art in a petition that attempt to buttress the same arguments previously considered and found insufficient by the Board will likely be found to be the same or substantially the same in the Board’s exercise of discretion to deny institution under Section 325(d). Continue reading

Institution Denial Finding Insufficient Evidence of Anticipation and Obviousness IPR2015-01495

Takeaway: Picking and choosing a particular combination of possible variables disclosed in a reference is improper in the context of anticipation.

In its Decision, the Board denied institution of inter partes review of the challenged claims of the ‘612 patent. The ‘612 patent “discloses parenteral administration of iron carbohydrate complexes ‘at relatively high single unit dosages for the therapeutic treatment of a variety of iron-associated diseases, disorders, or conditions’ . . . , e.g., iron deficiency anemia, anemia of chronic disease, and dysfunctional iron metabolism.” Continue reading