Takeaway: Cross examination of affidavit testimony obtained during a prior proceeding that is relied upon in support of a petition is authorized under the routine discovery rule and does not require a motion for additional discovery showing good cause. Moreover, it is the petitioner’s burden to produce such a witness for cross examination.
In its Order, the Board authorized Patent Owner to cross examine Petitioner’s witness. Patent Owner had contacted the Board seeking a discovery ruling to allow cross examination of a witness Petitioner had relied upon in showing that a certain reference qualifies as prior art. Petitioner argued that cross examination is not permitted per the routine discovery rule 37 C.F.R. § 42.51(b)(1) and further argued that the witness was unavailable. The Board authorized cross examination and determined that Petitioner—rather than Patent Owner—is responsible for producing the witness for cross examination. Continue reading
Takeaway: When showing that a patent does not recite a technological feature that is novel or unobvious over the prior art, the petitioner must analyze the question by looking at how each claim of the patent combines the individual components into an ordered whole.
In its Decision, the Board found that it was not more likely than not that at least one of the challenged claims (1-49) of the ’002 Patent is unpatentable, and denied institution of covered business method patent review. The ’002 Patent describes a system and method for using a mobile interface agent (“MIA”) to access information of a user.
Takeaway: An obviousness conclusion cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion.
In its Final Written Decision, the Board found that Petitioner did not show by a preponderance of the evidence that the challenged claims are unpatentable. The ’243 patent “relates to “telephone communication systems in penal institutions or similar facilities.” Continue reading
Takeaway: The Board will likely find unpersuasive arguments related to prior art where a petitioner fails to identify corresponding structure in the specification for a means-plus-function limitation.
In its Final Written Decision, the Board found that Petitioner showed by a preponderance of the evidence that claims 1-3, 5, 17, 18, and 20 are unpatentable but failed to show that claims 9-12, 14, and 16 were unpatentable. “The ’849 patent relates to providing instruction on playing a musical instrument, such as a guitar,” and in particular, “an instruction system that displays a graphical representation of a guitar and demonstrates to a user when and how to play a note or chord.” Continue reading
Takeaway: Application of the doctrine of collateral estoppel (issue preclusion)—where a judgment on the merits in a first proceeding precludes relitigation in a second proceeding of issues actually litigated and determined in the first proceeding—requires a final decision in the first proceeding and is discretionary.
In its Final Written Decision, the Board found that Petitioner had not proven that the challenged claims of the ‘167 patent are unpatentable as obvious. The ‘167 patent discloses “edible water-soluble delivery systems in the form of a film composition including a water-soluble polymer, an active component selected from cosmetic agents, pharmaceutical agents, vitamins, bioactive agents and combinations thereof, and at least one anti-tacking agent.” Continue reading
Takeaway: If prior art status of a reference is contested in prior proceedings, a petitioner should address any such deficiencies in the first instance, and not rely on being granted permission to file supplemental evidence.
In its Decision, the Board denied Petitioner’s request for an extension of time to file supplemental evidence and request to file a motion to submit supplemental information, and granted Patent Owner’s request to file a motion to stay related reexamination. Continue reading
Takeaway: Supplemental information may only be filed if a motion to submit supplemental information is granted. By contrast, supplemental evidence is served in response to an objection to the admissibility of evidence, and may also be filed with an opposition to a motion to exclude the objected to evidence.
In its Decision, the Board denied Patent Owner’s Motion to Submit Supplemental Information and ordered that the supplemental declaration be expunged from the record. Patent Owner sought to submit as supplemental evidence a supplemental declaration from Richard Mander, Ph.D., which the Board had previously authorized Patent Owner to file. Continue reading
Takeaway: An attempt to supplement unpatentability reasoning not set forth in the petition is not a basis for granting a request for rehearing.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution of post-grant review. In the Board’s Institution Decision, the Board granted the Petition and initiated post-grant review as to certain claims of the ‘292 patent, but denied the Petition as to other claims. Continue reading