Institution of Inter Partes Review Denied IPR2015-01932

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Takeaway: Simply stating that art is analogous and in the same field of endeavor is not enough to establish that it would have been obvious to combine the features of the art.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1, 3-4, 6-10, 12-15, 17-18, and 20-22) of the ’872 Patent.  The ’872 Patent relates generally to a method for selecting and allocating a seat or group of seats to a ticketed event, such as a sporting or concert event.

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To Redact An Entire Exhibit Board Expects A Specific Discussion Of Why Each Subpart Is Confidential IPR2016-00118

Takeaway: If parties intend to redact the entirety of an exhibit, the Board expects a specific discussion of each subpart within the exhibit. A general discussion of the exhibit as a whole is insufficient to establish that the entirety of the exhibit contains confidential information that should be sealed.

In its Order, the Board denied the joint Motion to Seal Exhibits 2007-2011 and Patent Owner’s Preliminary Response. The Board granted Entry of the Protective Order. Continue reading

Patent Not Entitled to Filing Date of Provisional Because Claims Not Supported By The Provisional IPR2015-01835

Takeaway: A reasonable expectation of success is not absolute predictability of success.

In its Decision, the Board determined that Petitioner had established a reasonable likelihood of prevailing in showing the unpatentability with respect to at least one IPR of claims 1-10 of the ’135 patent. Continue reading

A Showing That Third Party Is An Executor Or Board Member Is Insufficient For Real-Parties-In-Interest IPR2015-01769

Takeaway: Merely being an alleged executor or board member of Petitioner does not establish sufficiently that the individuals identified, in their individual capacities, exercise control or have an opportunity to exercise control of the proceeding, as opposed to in their capacities as executives or board members of Petitioner.

In its Decision, the Board determined that Petitioner had demonstrated that there is a reasonable likelihood that it would prevail with respect to at least one of claims 1-7 of the ’433 patent. Continue reading

Evidence Lacking To Show Genus Anticipated Later-claimed Species IPR2015-01723

Takeaway: To anticipate a later-claimed species, a pattern of preferences or other related teaching or suggestion must lead to a genus small enough that a person of ordinary skill in the art would at once envisage the claimed species.

In its Decision, the Board declined to institute inter partes review of claims 1-13, 20-27, and 34-61 of the ’208 patent because Petitioner had not established that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Continue reading

Document Is Prior Art Via Public Dissemination Or By Being Made Sufficiently Available IPR2015-01651

Takeaway: A document can become prior art by way of public dissemination or by being made sufficiently available to the public (e.g., via a search engine).

In its Decision, the Board instituted inter partes review of claims 1-20 of the ’271 patent.

According to the Board, the ’271 patent relates to a bottle cap (i.e., crown cap) that is made with thinner and harder steel compared to conventional crown caps. Petitioner asserted the following challenges to the ’271 patent: (1) claims 1-4, 10, 12-15, and 17-20 as obvious over Frishman and Industrial Heating; (2) claims 11 and 16 as obvious over Frishman, Industrial Heating, and Wagner; (3) claims 1-4 and 10-20 as obvious over Industrial Heating and Wagner; (4) claims 5-9 as obvious over Frishman, Industrial Heating, Mumford, and U.S. Steel; and (5) claims 5-9 as obvious over Industrial Heating, Wagner, Mumford, and U.S. Steel. Petitioner asserted that “average hardness” is hardness plus variations, and that “hardness” refers to Rockwell Hardness. Patent Owner did not dispute these assertions. Continue reading

Board Requests “List Approach” Over Motion to Strike IPR2015-00615, 00626

Takeaway: The Board prefers a “list approach” in lieu of granting a Motion to Strike material that allegedly exceeds the scope of Patent Owner’s Response because if the Board incorrectly determines that portions of Petitioner’s Reply are beyond the scope of Patent Owner’s Response, those portions would remain in the record for consideration on appeal.

In its Order, the Board authorized Patent Owner to file a list of items that it believes exceeded the scope of Patent Owner’s Response. Petitioner was authorized to submit a response thereto. Continue reading

Order Authorizing Filing Of Transcript Of Markman Hearing IPR2015-00664

Takeaway: Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R.§ 42.23(b) is an issue for the Board to determine.

In its Order, the Board authorized Patent Owner to file an exhibit containing the transcript of the Markman hearing that took place in a related litigation. However, the Board did not authorize Patent Owner to file any evidence other than this transcript. Petitioner was authorized to submit any objections that it had to Patent Owner’s filing.

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