Final Written Decision finding Challenged Claims Unpatentable under 35 U.S.C. 101 CBM2015-00012


Takeaway: The mere existence of a non-preempted use of an abstract idea does not prove that a claim recites patent-eligible subject matter.

In its Final Written Decision, the Board found that Petitioner demonstrated by a preponderance of the evidence that claims 7, 8, 26, and 27 of the ’947 patent are unpatentable. The ’947 patent “describes a method and system for making loans such as mortgages.” Continue reading

Denying-in-Part Institution on Incorporation by Reference Grounds IPR2015-01739


Takeaway: In determining that a Petition had incorporated by reference 10 pages from other documents, the Board declined to consider the last 10 pages of the Petition, which resulted in granting institution of some grounds of unpatentability, but the incomplete analysis for some additional grounds resulted in those grounds not being instituted.

In its Decision, the Board granted institution of inter partes review of each of the challenged claims 1-25 of the ’811 patent, because the Board determined Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of each of those claims. The ’811 patent “is directed to methods and devices for detecting a position-based attribute of a finger, stylus, or other object with a touchpad or other sensor having a touch-sensitive region that includes a plurality of electrodes.” Continue reading

Denying Rehearing of Decision Not to Institute Based on Lack of Showing of Abuse of Discretion IPR2015-01086


Takeaway: The panel that renders the decision on institution reviews its decision for an abuse of discretion when a request for rehearing is filed.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Decision not to institute trial on both grounds: (1) claims 1, 2, and 8 as anticipated by Nieboer; and (2) claims 1-13 as unpatentable as obvious over Nieboer and Kolter. When rehearing a decision on institution, an abuse of discretion standard is applied, and an abuse of discretion is “indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Continue reading

Granting Institution Despite Request for Consideration of Previously-Submitted Prior Art IPR2015-01557


Takeaway: The Board may exercise its discretion to deny asserted grounds of unpatentability for reasons of administrative necessity and to ensure timely completion of an instituted proceeding.

In its Decision, the Board determined Petitioner had established a reasonable likelihood of establishing that claims 10 and 14 of the ’188 patent are unpatentable. The ’188 patent “is directed to a memory card that includes both a device connector, conforming to a device connection standard, and a host connector, conforming to a host connection standard.” Continue reading

All Challenged Claims Found Unpatentable Over Unpersuasive Secondary Considerations IPR2014-01161


Takeaway: One’s expertise, even draped with a skilled-artisan veil, does not entitle a naked opinion to much weight.

In its Final Written Decision, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that claims 1 and 3 of the ’920 patent are unpatentable. Continue reading

Final Written Decision Finding Some Claims Not Unpatentable For Use of Non-Analogous Art IPR2014-01079


Takeaway: A petitioner must show that references are analogous art to be usable in an obviousness challenge by showing that the reference is either in the field of endeavor of the challenged patent or reasonably pertinent to the problem of the challenged patent such that the reference logically would have commended itself to an inventor’s attention in considering his problem.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1, 3, 6-9, 12-16, 20, and 21 of the ’949 patent are unpatentable as anticipated, but had not demonstrated that claims 2, 4, 10, 11 ,17, and 25 are unpatentable. The ’949 patent relates to “a variable movement headrest arrangement for providing support to the head of an occupant of a vehicle upon vehicle impact.” Continue reading