Decision Denying Institution Of Inter Partes Review IPR2015-01784

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Takeaway: Patent drawings do not define precise proportions of depicted elements and thus may not be relied upon to show particular sizes if the specification is completely silent on the issue.

In its Decision, the Board denied the Petition for inter partes review. In the course of doing so, the Board found that Petitioner had not shown a reasonable likelihood that it would succeed in proving any of the challenged claims of the ‘443 patent to have been obvious.

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Order Denying Motion For Late Submission Of Supplemental Information IPR2015-01379

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Takeaway: A motion to submit supplemental information must show why the supplemental information reasonably could not have been obtained earlier.

In its Order, the Board denied Petitioner’s Motion for Late Submission of Supplemental Information. Although the Motion had been timely filed, the Board was not persuaded that the supplemental information sought to be introduced could not have been submitted earlier.

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Challenged Claims Not Patent Eligible in Final Written Decision CBM2014-00184

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Takeaway: Questions on preemption are inherent in and resolved by the Board’s § 101 analysis; thus, while preemption may signal subject matter that is not patent eligible, the absence of complete preemption does not demonstrate patent eligibility.

In its Final Written Decision, the Board found claims 1-7 of the ‘214 patent to be unpatentable. The ‘214 patent “relates to an affiliate manipulation system that permits consumers, Internet Service Providers (ISPs), search engines, and intermediaries to maximize affiliate program participation in transactions by or through them.” Continue reading

Final Written Decision Finding Claims Unpatentable IPR2015-00122

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Takeaway: If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

In its Final Written Decision, the Board found the challenged claims of the ‘063 patent to be unpatentable as obvious. The ‘063 patent “relates to the automatic conversion of non-negotiable credits to funds.” “In particular, an entity and a commerce partner agree to permit transfers or conversions of non-negotiable credits to entity independent funds in accordance with a fixed credits-to-funds ratio” and the “conversion allows the user to make a purchase from the commerce partner who accepts as payment the converted loyalty points.” Continue reading

Request for Rehearing of Final Written Decision Denied IPR2014-00688

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Takeaway: Evidence of failure to include a real party-in-interest that is presented after entry of a final written decision will not be considered because it is late.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision regarding claims 1 and 15 of the ’607 Patent. The Board noted that a Final Written Decision is reviewed for abuse of discretion, and the party requesting rehearing bears the burden of showing that the Final Written Decision should be modified.  The Request must identify all matters the party believes were misapprehended or overlooked.

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Institution Granted Where SEC Filing Found to be Printed Publication IPR2015-01853

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Takeaway: The ability to search an SEC form based on the technical content contained therein is not a requirement for such a form to qualify as a printed publication where other means exist to allow one to locate the document upon exercising reasonable diligence.

In its Institution Decision, the Board instituted inter partes review of claims 1-3, 5-8, and 10-41 of the ’826 patent. The ’826 patent “relates to methods of using a sustained release oral dosage form of an aminopyridine composition to treat a neurological disorder, such as multiple sclerosis (‘MS’), by maximizing the therapeutic effect, while minimizing adverse side effects.” Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-01416

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Takeaway: When analyzing patentability, the Board will not hold the asserted prior art to a different standard than the claimed invention.

In its Final Written Decision, the Board found the challenged claims of the ’634 patent unpatentable. The ’634 patent “describes a hybrid vehicle with an internal combustion engine, an electric motor, and a battery bank, all controlled by a microprocessor that controls the direction of torque transfer between the engine, motor, and drive wheels of the vehicle.” Continue reading

Instituting CBM Review for Patent with Claim Encompassing Transitory, Propagating Signal CBM2015-00182

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Takeaway: A claim that encompasses a transitory, propagating signal is not patent eligible, and adding the phrase “having program code recorded thereon” to limit computer readable medium does not necessarily limit the medium to non-transitory media.

In its Decision, the Board instituted covered business method (CBM) review, finding that Petitioner demonstrated that it is more likely than not that the challenged claims of the ’132 patent are unpatentable. A request by Patent Owner to expand the panel for the decision to institute was also denied. Continue reading

Institution Denied IPR2015-01792

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Takeaway: If a patent owner presents evidence of secondary considerations of non-obviousness, a petition asserting obviousness should address the evidence substantively.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims (1-10) of the ’522 Patent, and denied institution of inter partes review. The ’522 Patent is directed in part to polynucleotides encoding the extracellular region of an insoluble human TNF receptor (“TNF-R”).

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