Final Written Decision Finding Some Claims Unpatentable IPR2014-01363

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Takeaway: In making an obviousness argument, a petitioner must address all design considerations in combining its references.

In its Final Written Decision, the Board found that challenged claims 9-19, 25-36, 40, and 63 of the ’453 Patent are unpatentable, and that challenged claims 23 and 24 are not unpatentable. The ’453 Patent relates to a humidifier for use with a continuous positive airway pressure (CPAP) device.

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Granting Request to Expunge Motion for Observation IPR2015-00325

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Takeaway: If a patent owner is granted authorization to file a surreply on a particular issue after cross-examination of a reply witness, the patent owner cannot also file observations on the cross-examination of the reply witness directed to the same issue.

In its Order, the Board granted Petitioner’s request for Patent Owner’s Motion for Observation to be expunged. The Board noted that “the purpose of a motion for observation is to provide a party a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness because no further substantive paper is permitted after the reply by the party.” In this case, the Board granted Patent Owner’s “request for authorization to file a surreply with respect to the issue of antedating the asserted prior art reference patents involved in the grounds of unpatentability on which trial has been instituted.” The surreply could be filed with sufficient time after cross-examining Petitioner’s Reply witness. Accordingly, the surreply, which was Patent Owner’s last substantive paper, was filed after the cross-examination. Accordingly, it was improper to file observations on the cross-examination directed to the issue discussed in the surreply, when the surreply was filed after the cross-examination. The Board noted that Patent Owner could have filed observations on the cross-examination directed to issues other than what was authorized to be discussed in the surreply, but that was not the case in this proceeding. Continue reading

Denying Institution of CBM Review Because Claims Not Directed to Financial Product or Service CBM2015-00164

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Takeaway: To qualify as a CBM patent, the claims must be directed to a method of performing data processing or other operations used in the practice, administration, or management of a financial product or service, not merely whether the claims are capable of being used for marketing or valuation purposes.

In its Decision, the Board denied institution of any covered business method patent review of challenged claims 1-9 of the ’724 patent, because it concluded that Petitioner failed to demonstrate that the ’724 patent is a “covered business method patent” as defined by AIA § 18(d)(1). The ’724 patent is “directed to a ‘web site response measurement tool’ for collecting feedback and measuring opinion of users of the website.” Continue reading

Granting Motion to Compel Routine Discovery Cited in Patent Owner Response IPR2015-00592; IPR2015-00594

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Takeaway: A party can be ordered to submit information it produced in a related proceeding under a protective order, if that information is cited to by that party or if that information is inconsistent with positions taken by that party in the instant proceeding.

In its Order, the Board granted Petitioner’s motion to compel with regard to IPR2015-00594 (the ’594 proceeding), but denied Petitioner’s motion with regard to IPR2015-00592 (the ’592 proceeding). Specifically, Petitioner “sought the transcript of the deposition of Mr. Mombers in the related International Trade Commission (ITC) proceeding, and other information related to inventorship of Favrat.” Continue reading

Order Regarding Obligation of Party to Make Third-Party Declarant Available for Cross-Examination IPR2015-01322

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Takeaway: A party runs the risk that direct testimony will not be considered, if the declarant is not made available for cross-examination, even if the declarant is an employee of a third party that is requiring a subpoena before being available for cross-examination.

In its Order, the Board denied Patent Owner’s request to file a motion to strike; authorized Petitioner to file a motion to apply for a subpoena to compel the cross-examination testimony of Lindsey Miles; and authorized Patent Owner to file an opposition thereto. Continue reading

Final Written Decision Finding Claims Unpatentable IPR2014-01252

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Takeaway: In order to prevail on showing that a petitioner’s inherency arguments regarding obviousness must fail, the patent owner must avoid premising its arguments on a limited view of the prior art.

In its Final Written Decision, the Board held that all of the challenged claims (1, 2, 7, 8, 10, 13, and 14) of the ’444 Patent are unpatentable. The ’444 Patent discloses an audiovisual recording and playback device that provides substantially simultaneous recording and playback, allowing user-controlled programming delay.

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Petitioner Correctly Designated As Supplemental Information Exhibits Offered To Support Contention That References Are Prior Art IPR2015-01379

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Takeaway: The moving party seeking to submit supplemental information bears the burden of proof to establish that proposed exhibits are supplemental information, rather than supplemental evidence.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information. Petitioner filed a Motion to Submit Supplemental Information regarding three exhibits. Patent Owner asserted that Petitioner, as the moving party seeking to submit supplemental information, bears the burden of proof to establish that proposed Exhibits 1016-1018 are supplemental information, rather than supplemental evidence. Continue reading

Motion to Submit Supplemental Information Was Granted For Public Documents But Denied For Confidential Documents IPR2015-00643, 644, 830

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Takeaway: A motion to submit supplemental information more than one month after the date the trial is instituted must show (a) why the supplemental information reasonably could not have been obtained earlier, and (b) that consideration of the supplemental information would be in the interests-of-justice.

In its Decision, the Board granted-in-part and denied-in-part Patent Owner’s motion to submit supplemental information. Patent Owner sought to file nine references in the Declaration of Dr. Grabowski and a corrected version of Exhibit 2133. Patent Owner noted that several documents were erroneously not filed as exhibits with Dr. Grabowski’s declaration. Patent Owner first became aware of the error on January 12, 2016. Continue reading

Motion to Exclude Denied For Not Explaining Adequately Its Objections to the Admissibility IPR2014-01339

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Takeaway: A motion to exclude must state why the evidence is inadmissible, identify the corresponding objection in the record, and explain the objection.

In its Final Written Decision, the Board determined that Petitioner has proven by a preponderance of the evidence, that claims 1 and 3-11 of the ’181 patent are unpatentable. The Board had instituted review on the following grounds: (1) claims 1, 3–7, and 9–11 as anticipated under 35 U.S.C. § 102(b) by Di Bernardo, (2) claims 1, 3–7, and 9–11 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Kawabe, and (3) claim 8 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Lachinski. The Board maintained its construction for the term “geographic location of interest” as provided in its Decision on Institution. In addition, the Board stated that no patentable weight would be given to the term “server farm,” and that even if it were to accord patentable weight to the term, the broadest reasonable interpretation would be “a group of networked servers.” As for the means plus function interpretation of claims 7-10, the Board declined to adopt Patent Owner’s interpretation that the corresponding structure is only the algorithm provided in the specification. Continue reading

Request for Additional Discovery Denied Where Requesting Sales Agreements To Prove Privity IPR2015-00195, 249

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Takeaway: A significant delay in filing a request for additional discovery once a party becomes aware of the existence of the items sought to be discovered can result in the Board denying the request.

In its Order, the Board denied Patent Owner’s Motion for Discovery. Patent Owner sought discovery of certain sales agreements. Petitioner had purchased seven bottling machines from GEA Process Engineering, Inc. (“GEA”) and GEA’s predecessor, Procomac SpA. These seven machines were purchased in three groupings: (1) lines 1–5, (2) line 6/7, and (3) line 8. Patent Owner contends that the sales agreement(s) it seeks pertain to lines 1–5 and 6/7, and will likely establish that Petitioner had the right to control the GEA litigation. Continue reading