In its Final Written Decision, the Board found that Petitioner had not met its burden to prove by a preponderance of the evidence that claims 1-5 of the ’058 Patent are unpatentable. The Board had instituted trial on those claims on a single ground: obviousness over the combination of Gertz, Stewart, and Morrow. The Board relied on its analysis in its Final Decision of IPR2013-00062 (“062 Decision”) in this Decision. The Board also dismissed Patent Owner’s Motion to Exclude and Motion to Submit Supplemental Information. Continue reading
Category Archives: Claim Construction
Final Written Decision and Denying Motion to Amend Without Prejudice IPR2013-00048
In its Final Written Decision, the Board found that claims 5, 13, 17, 19, 22, 37, 45, and 49 of the ’189 Patent are unpatentable, the remaining claims of the ’189 Patent (1-4, 6-12, 14-16, 18-28, 30-32, 34-36, 38-44, 46-48, and 50-52) are not unpatentable, the Motion to Amend Claims is denied without prejudice, Petitioner’s Motion to Exclude Evidence is dismissed, and Patent Owner’s Motion to Exclude Evidence is dismissed-in-part and denied-in-part. Continue reading
Denying Motion for Rehearing of Decision on Institution IPR2013-00572
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying institution of inter partes review of claims 23, 24, 26, and 33 of the ’492 Patent. The Board stated that the standard of review of a decision on institution is abuse of discretion, which may be determined by analyzing whether a decision is based on an erroneous interpretation of law, a factual finding is not supported by substantial evidence, or the decision represents an unreasonable judgment in weighing relevant factors. The Board also stated that the request must specifically identify all matters that the movant believes the Board misapprehended or overlooked. Continue reading
Final Written Decision and Denying Motion to Amend IPR2013-00050
In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that all the challenged claims are unpatentable, denied Patent Owner’s Corrected Motion to Amend Claims, and denied-in-part and dismissed-in-part Patent Owner’s Motion to Exclude Evidence. Continue reading
Final Written Decision IPR2013-00041
In its Final Written Decision, the Board found that claims 23 and 25-29 of U.S. Patent No. 5,746,775 (the ’775 Patent) were unpatentable, dismissed Petitioner’s Motion to Exclude and denied Patent Owner’s Motion to Exclude. The ’775 Patent relates to methods of exposing collagenous biomaterial to an alcohol, in order to inhibit in vivo calcification. Continue reading
Final Written Decision (claim construction) – IPR2013-00059
In its Decision, the Board found that claims 1-9, 11-19, and 22 of the ‘641 patent are unpatentable; and that claims 10 and 20 have not been shown to be unpatentable. The ‘641 patent relates to high-speed communication cables using at least two twisted pairs of wires. Continue reading
Final Written Decision (Claim Construction) – IPR2013-00058
In its Final Written Decision, the Board found that claims 1-34 of the ’575 Patent are unpatentable. Specifically, the Board found that claims 1-34 are unpatentable as anticipated by or obvious over various different references and combinations of references, including Tessier ‘046, Cheng ‘467, Burk ‘710, Cutler ‘064, JP ‘507, McNeill ‘813, and JP ‘470. Continue reading
Final Written Decision (Motion to Amend) – IPR2013-00093
In its Final Written Decision, the Board found that the challenged claims of the ‘880 patent were unpatentable as anticipated and obvious in view of the prior art. Also, the Board denied Patent Owner’s Motion to Amend. Continue reading
Order on Conduct of the Proceeding re Claim Construction IPR2013-00483
In its Order, the Board requested the parties’ input on whether the broadest reasonable interpretation standard still applies to the final written decision where the ’917 Patent expired subsequent to the institution of trial. The Board, citing In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012), stated that it does not believe that the broadest reasonable construction rule should apply to the final written decision. The Board noted that the same patent is involved in IPR2013-00638, and that because that proceeding was instituted after expiration of the patent, the Board declined to use the rule of broadest reasonable construction. Continue reading
Granting Sua Sponte Motion for Additional Briefing re Terminal Disclaimer IPR2013-00242
Takeaway: On issues of first impression, the Board may request briefing from the parties sua sponte.
In its Order, the Board sua sponte ordered briefing regarding the effect of Patent Owner filing a terminal disclaimer of the remaining term of the ’076 Patent. Patent Owner stated that there was a dispute between the parties as to whether the ’076 Patent expires in 2014 or 2017, and that the expiration affects whether the claims are given their broadest reasonable interpretation (unexpired patent) or are interpreted similar to that of a district court (expired patent) in this proceeding. Patent Owner then filed a terminal disclaimer and requested authorization to file a motion to terminate the proceeding on the basis that the Board applied the broadest reasonable interpretation standard in the decision to institute the inter partes review. Petitioner opposed the requests stating that Patent Owner improperly delayed raising this issue until all substantive briefing was completed and should have raised it in its Response. Petitioner also disputed that there was ever a disagreement regarding the expiration date of the ’076 Patent. Continue reading