Motion to Submit Supplemental Information as to Translation Accuracy Granted IPR2016-00006

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Takeaway: A declaration attesting to the accuracy of a translation of foreign prior art submitted as supplemental information is permissible if the request to submit supplemental information is made within one month of the date of trial institution, the information is relevant to the patentability of the claims, and it does not change the evidence initially presented in the petition.

In its Decision, the Board granted Petitioner’s unopposed motion to submit two declarations attesting to the accuracy of the English translation of a Japanese Patent Application to Kawakami as supplemental information.  As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. Continue reading

Order Authorizing Application for Subpoena to Obtain Discovery from Non-Party IPR2015-01242, -01243, -01244

Takeaway: A non-party’s agreement to produce requested discovery within the schedule of the proceeding and an indication as to the lack of burden on the non-party is likely persuasive to the Board when deciding whether to authorize a party’s application for a subpoena.

In its Order, the Board addressed matters that had been discussed during a consolidated conference call with the parties. Initially, the Board ordered the parties to jointly file a public version of Exhibit 3001, which was filed under seal.  The Board then addressed Petitioner’s request for permission to seek additional discovery with respect to several items. Continue reading

Institution Granted-In-Part Where Patent Not Entitled to Earlier Filing Date IPR2016-00061

Takeaway: The written description requirement is not satisfied by subject matter that is not disclosed but would be obvious over what is disclosed.

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo.

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Institution Granted Where Claims Not Entitled to Earlier Priority IPR2016-00061

Takeaway: The written description requirement is not satisfied by “subject matter which is not disclosed but would be obvious over what is expressly disclosed.”

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8 of the ’593 Patent. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo. Continue reading

Denying Institution where Petition Found to be Based on Mere Probability or Possibility in Prior Art Reference IPR2015-01543

Takeaway: Mere probability or possibility in a prior art reference disclosure falls short of demonstrating that the missing descriptive matter is necessarily present.

In its Decision, the Board concluded that Petitioner did not establish a reasonable likelihood of prevailing as to its challenge of claims 11-19 and 39-47 of the ’581 patent. The ’581 patent relates to “a system and method for collecting information about a device or user of the device.”  Petitioner asserted three grounds of unpatentability based primarily on the Seiffert and Fawcett references, which the Board treated as seven separate grounds. Continue reading

Motion For Sanctions Granted-in-part for Violation of Unentered Protective Order IPR2015-01750

Takeaway: The Board will not excuse conduct constituting breach of a protective order simply because the protective order had not yet been entered, particularly when the parties had agreed to operate with the understanding that it was in place.

In its Order, the Board granted-in-part Petitioner’s motion for sanctions against Patent Owner.  The Board noted that Petitioner has the burden to persuade the Board that sanctions are warranted.  In general, the Board reviews: (i) whether a party has performed conduct that warrants sanctions; (ii) whether the moving party has suffered harm from that conduct; and (iii) whether the sanctions requested are proportionate to the harm suffered by the moving party. Continue reading

Motion for Routine Discovery Granted as to Deposition Transcripts Referred to by Declarants IPR2015-00698, IPR2015-00700

Takeaway: Deposition transcripts that are relied upon by declarants are routine discovery under 37 C.F.R. § 42.51(b)(1)(i). 

In its Order, the Board determined that Patent Owner could use depositions during the cross-examination of Petitioner’s declarants.  Petitioner’s declarations refer to seven deposition transcripts.  During the call, Petitioner offered to allow Patent Owner to use the entirety of the depositions during cross-examinations, but not the underlying exhibits because Petitioner stated they were not reviewed by the declarants.  The Board agreed that the depositions, but not the underlying exhibits, are routine discovery under § 42.51(b)(1)(i).  The Board noted that Petitioner opened the door to use of the depositions when it filed declarations relying upon their content.  The Board further noted that Patent Owner may question the declarants on what material they reviewed in preparing the declarations.

Under Armour, Inc. v. Adidas AG, IPR2015-00698; IPR2015-00700
Paper 37: Order on Routine Discovery
Dated: March 18, 2016
Patents: 8,092,345 B2; 8,579,767 B2
Before/Written by: Jennifer S. Bisk

Final Written Decision with Dissent Differing with Majority’s Technical Analysis IPR2014-01374

Takeaway: Based on their technical backgrounds, judges at the Board are capable of addressing very technical arguments related to the disclosure of prior art and may not always agree with the technical analysis of the other judges on the Board’s panel.

In its Final Written Decision, the Board held that Petitioner had not established by a preponderance of the evidence unpatentability of the challenged claims. The Board also dismissed the parties’ Motions to Exclude Evidence.  Judge Clements dissented from the opinion of the Board. Continue reading

Denying Motion to Exclude Evidence Going to the Weight of Testimony IPR2015-00093

Takeaway: The Board acts like a judge in a bench trial in district court. Therefore, it will not exclude evidence that goes to the weight of the testimony, such as alleged bias, but will consider it in assessing the evidence presented.

In its Decision, the Board denied in part and dismissed in part Petitioner’s Motion to Exclude Evidence. Petitioner moved to exclude as unfairly prejudicial Exhibit 2002, which is a declaration proffered by Patent Owner in support of its arguments that Petitioner did not establish the unpatentability of claims 1-28. Alternatively, Petitioner moved to exclude certain paragraphs of Exhibit 2002 for various other reasons, such as lack of foundation, being related to inadmissible legal issues, improper attorney argument, and lack of relevance. Continue reading

Final Written Decision Finding Some Challenged Claims Unpatentable IPR2015-00093

Takeaway: A party should include arguments that account for the possibility that the Board will not adopt a party’s preferred construction in order to prevent the Board ruling in favor of the opposing party based on the rejection of the party’s claim construction.

In its Final Written Decision, the Board found that Petitioner had shown that claims 1-6 and 9-28 of the ’220 Patent are unpatentable, but that Petitioner did not demonstrate that claims 7 and 8 are unpatentable. The ’220 Patent discloses a system for detecting an event at a premises and supplying information regarding the event to a website that various authorized users can access. Continue reading