Final Written Decision Finding No Inconsistency between Expert Testimony and Earlier Paper by Same Expert IPR2015-00009

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Takeaway: A declarant’s prior statements acknowledging an inventor being the first to report on claimed subject matter may not be inconsistent with later testimony that the same subject matter is unpatentable based on a patent prior art reference because patent references are not necessarily part of the body of work reported in academic literature.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ’503 patent are unpatentable. The ’503 patent “is directed to a microfluidic device for analyzing and/or sorting biological materials. Continue reading

Final Written Decision Finding Claims Unpatentable and Real Party in Interest Satisfied IPR2015-00059

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Takeaway: The key to a real party-in-interest inquiry is the relationship between the potential unnamed real party-in-interest and the proceeding, not the relationship between parties.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ‘781 patent are unpatentable as anticipated by Divsalar and rejected Patent Owner’s argument that the Petition failed to name all real parties-in-interest. The ‘781 patent “describes the serial concatenation of interleaved convolutional codes forming turbo-like codes.” Continue reading

Decision Partially Granting Institution Based on References Considered During Prosecution IPR2016-00055

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Takeaway: Arguments against institution based on prior art having been considered during prosecution may be more successful where a patent owner can direct the Board to a substantive discussion of the references in the record or where the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the petition.

In its Decision, the Board instituted inter partes review of claims 1-24 and 29 of the ‘717 patent, where Petitioner had sought review of claims 1-30. The ‘717 patent is generally directed to a “programmable communicator device.” Continue reading