Covered Business Method Patent Review Instituted CBM2015-00161

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Takeaway: The fact that a petitioner copied the arguments and exhibits from a prior petition of a non-party does not prove in itself that the non-party is a real party-in-interest to the current proceeding.

In its Decision, the Board granted institution of covered business method review on all challenged claims of the ’304 Patent. The ’304 Patent discloses a display and a method of using the display to trade a commodity.

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Final Written Decision Finding All Claims Unpatentable Subject Matter CBM2014-00171

Takeaway: The Board may refuse to adopt a district court claim construction ruling, even if the Board considers the construction under the Phillips standard.

In its Final Written Decision, the Board determined that all of the challenged claims of the ’740 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’740 Patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.”

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Institution Denied Where Patent Entitled to Earlier Priority Date IPR2015-01778

Takeaway: The Board will consider a petitioner’s argument that the patent-at-issue is not entitled to an earlier priority date because the challenged claims lack written descriptive support in the parent applications, and will not dismiss it per se as an attempt to circumvent the statute, which only allows anticipation and obviousness arguments in inter partes reviews.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims of the ’506 Patent. The ’506 Patent is directed to the treatment of “all known types of acne,” broadly defined as “a disorder of the skin characterized by papules, pustules, cysts, nodules, comedones, and other blemishes or skin lesions.”

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Decision Denying Institution Where Petitioner Does Not Provide Adequate Structure Corresponding To Alleged Means-Plus-Function Limitations IPR2015-01667

Takeaway: A proposed combination of references that does not explain what is believed to be missing from the primary reference may result in the Board denying institution due to a lack of explanation as to how a person of ordinary skill would have combined the references.

In its Decision, the Board denied the Petition as to all challenged claims. Thus, the requested inter partes review was not instituted.

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Final Written Decision Finding Most Of The Challenged Claims Unpatentable IPR2014-01200

Takeaway: A complex drawing submitted in order to show conception antedating an applied reference may require additional explanation or support if it is not possible to determine from the drawing how the depicted subject matter supports the elements of the claim in question.

In its Final Written Decision, the Board found that claims 52, 53, 59, and 60 of the ‘397 patent are unpatentable. Also, the Board denied Patent Owner’s Motion to Exclude.

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Authorizing Motion for Additional Discovery as to Documents Held by Third Parties IPR2015-01164; IPR2015-01165; IPR2015-01166

Takeaway: In a set of related proceedings with different petitioners, the Board authorized a motion and oppositions thereto discussing whether documents held by non-parties in some of the proceedings and related to secondary considerations should be compelled as additional discovery.

In a first Order, the Board granted authorization for Patent Owner to file a 7-page motion for additional discovery and for Petitioner and two third parties whose documents had been requested and who are Petitioners in related proceedings each to file a 7-page opposition. In a second Order, the Board granted Patent Owner’s request for an enlargement of time to file its Response in each of the instant proceedings such that if Patent Owner’s motion for additional discovery is denied, it will get 5 business days to file its Response and if Patent Owner’s motion for additional discovery is granted, it will get 5 business days from the day the production is complete to file its Response. Continue reading

Denying-in-Part Institution on Incorporation by Reference Grounds IPR2015-01739

Takeaway: In determining that a Petition had incorporated by reference 10 pages from other documents, the Board declined to consider the last 10 pages of the Petition, which resulted in granting institution of some grounds of unpatentability, but the incomplete analysis for some additional grounds resulted in those grounds not being instituted.

In its Decision, the Board granted institution of inter partes review of each of the challenged claims 1-25 of the ’811 patent, because the Board determined Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of each of those claims. The ’811 patent “is directed to methods and devices for detecting a position-based attribute of a finger, stylus, or other object with a touchpad or other sensor having a touch-sensitive region that includes a plurality of electrodes.” Continue reading

Evidence Excluded For Insufficient Evidence To Support A finding That It Is What The Proponent Claims It Is IPR2014-01347

Takeaway: Failure to produce evidence to support a finding that an item is what the proponent claims it is under Federal Rules of Evidence 901(a), will result in the exclusion of the item.

In its Final Written Decision, the Board excluded Goldbeck (Exhibit 1005), which mooted or disposed of all issues in the inter partes review (IPR). The Dissent concluded that Goldbeck is admissible. Continue reading

Petition Denied Under Board’s Discretion IPR2015-01671

Takeaway: If a petitioner relies upon the same arguments that were found unpersuasive in a final written decision in a prior IPR of a similar patent, then the Board may use its discretion to deny institution.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1-30) of the ’162 Patent. The ’162 Patent is directed to lightweight fabrics that provide protection from heat, flame, and electrical arc.

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