In its Decision, the Board denied Petitioner’s request for rehearing of the Board’s Decision Not to Institute inter partes review of the ’798 Patent. The Board began by stating the standard for a request for rehearing, which requires the party challenging the decision to identify “all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, opposition, or a reply.” 34 C.F.R. § 42.71(d). Continue reading
Category Archives: Bar by Civil Action
Denying Institution IPR2014-00361
In its Decision, the Board denied institution of an inter partes review of the ’122 patent as being time-barred under 35 U.S.C. § 315(b) because Petitioner was served with a complaint alleging infringement of the ’122 patent more than one year before filing the Petition. Continue reading
Decision Denying Institution IPR2014-00401
In its Decision, the Board denied institution of inter partes review, holding that the Petition was time-barred under 35 U.S.C. § 315(b). Petitioner was served with three complaints alleging infringement of the ‘180 patent. The first was served on April 5, 2007, the second on March 17, 2010, and the third in 2013. The third complaint was served within one year of the Petition’s filing date, and therefore, would not act as a bar to institution. Petitioner argued that the 2007 and 2010 complaints did not bar institution for a number of reasons, each of which the Board rejected. Continue reading
Decision Granting Petitioner’s Motion For Joinder IPR2014-00556
In its Decision, the Board granted Petitioner’s Motion for Joinder with IPR2014-00003. The Board granted this Motion despite Patent Owner’s Opposition to the Motion, and with the knowledge that the Petitioner in IPR2014-00003 was an entity separate from the Petitioner in the instant proceeding. If not for the Board granting Petitioner’s Motion for Joinder, the instant proceeding would have been time-barred under 35 U.S.C. § 315(b). Continue reading
Denying Rehearing and Expanded Panel Requests IPR2014-00236, 239, 240
In its Decision, the Board denied Petitioner’s Request for Rehearing and its Request for Expanded Panel. The Board had denied institution of inter partes review in each of the three Petitions as not having been timely filed within the one-year period set forth in 35 U.S.C. § 315(b). Petitioner argued in its Rehearing Request that the Board’s Decision was based on a clearly erroneous interpretation of the statute. Petitioner also requested an expanded panel because of “an alleged appearance of impropriety regarding the judge who authored the Decision Denying Institution” and the importance of the time-bar issue. Continue reading
Decision Regarding Time Bar and Real Parties-in-Interest IPR2014-00293; IPR2014-00294; IPR2014-00296; IPR2014-00297; IPR2014-00298
Takeaway: The service date of an amended complaint for purposes of determining the time bar under 35 U.S.C. § 315(b) is the date the amended complaint is actually filed and served, not when a proposed amended complaint that requires approval from the court is first served as an attachment to a motion for leave.
In its Decision, the Board determined that 35 U.S.C. § 315(b) does not bar institution of the Petitions, that that none of the Petitions should be denied for failure to identify all real parties-in-interest. Patent Owner contended in its Preliminary Response that the Petitions were time-barred as being filed more than one year after the date on which Petitioner, a real party-in-interest, or a privy of Petitioner was served with a complaint alleging infringement of the patent, and that Petitioner failed to identify all real parties-in-interest. Following a conference call, the Board ordered briefing by both parties on the subject. Continue reading
Order Regarding Time Bar For Filing IPR IRP2014-00360
In its Decision, the Board concluded that Petitioner was not time-barred under 35 U.S.C. § 315(b) because it was not “served with a complaint” alleging infringement more than one year before filing the Petition. Patent Owner argued that the Petition was time-barred in its Preliminary Response, and after a conference call, the Board ordered the parties to submit additional briefing on the question. The Board addressed only the time bar issue under 35 U.S.C. § 315(b) in this Decision and indicated that it would address the question of whether to institute an inter partes reviewin a separate decision. Continue reading
Decision Denying Institution and Motion for Joinder IPR2014-00271
In this Decision, the Board addressed a Corrected Petition that Petitioner had filed challenging the patentability of claims 1, 3-5, 7-13, 17-28, 30-33, 35-37, 40-43, and 46-50 of the ’403 patent, which relates to a graphical user interface. The Board also considered a motion that Petitioner had filed seeking joinder with IPR2013-00292 also involving the ’403 patent. Continue reading
Decision to Institute and Granting Motion for Joinder IPR2014-00557
In its Decision, the Board instituted inter partes review of claims 58 and 63 of the ’398 Patent and granted the Motion for Joinder. The ’398 Patent relates to systems and methods for providing multimedia content to and from various devices, specifically allowing cellular networks to provide users access to information from the Internet. Petitioner only challenged claims 58 and 63 of the ’398 Patent, which both depend from independent claim 15, alleging that both claims are unpatentable as obvious in view of Palin, Karaoguz, and Seaman. Continue reading
Decision Denying Institution IPR2014-00319
In its Decision, the Board denied institution of the Inter Partes Review as time-barred under 35 U.S.C. § 315(b) because it was not filed within the statutory period of 35 U.S.C. § 315(b). The date of service of two different complaints was an issue of primary focus by the Board. Continue reading