Institution of Inter Partes Review Denied IPR2016-00450

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Takeaway: While the terms of an unexpired patent are given their broadest reasonable interpretation, any proposed interpretation must still be reasonable.

In its Decision, the Board declined to institute inter partes review of any challenged claims (1-10, 13, and 17-22) of the ’920 Patent.  The ’920 Patent relates generally to a process for verifying the identity of an online registrant.

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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

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

Final Written Decision Finding Insufficient Articulated Reasoning Presented in Support of Obviousness Grounds IPR2015-00155

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

Final Written Decision Revising Previous “Means” Construction In View of Williamson v. Citrix IPR2015-00298

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

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-01416

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

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

Final Written Decision finding Displayed Poster to be a Printed Publication IPR2014-00513

Takeaway: A poster that is displayed may be considered a printed publication where the intended audience of the poster session necessarily includes interested persons of ordinary skill in the art pertinent to the challenged claims.

In its Final Written Decision, the Board found that Petitioner had proven that claim 10 is unpatentable as obvious, but had not proven the unpatentability of claims 17 and 18. The Board also granted Patent Owner’s Motion to Amend and denied its Motion to Exclude Evidence. The ’550 patent “discloses using a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.” Continue reading

Denying Request for Rehearing that Separately Argued Claims Previously Analyzed Together in Petition IPR2015-01545

Takeaway: Where challenged claims are analyzed together in a petition, those claims may not later be argued separately in a Request for Rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s denial of institution of inter partes review. Petitioner’s requested partial reconsideration on the following grounds: Continue reading