Final Written Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend IPR2014-01154

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Takeaway: A patent owner’s duty of candor and good faith to the Board may require that the patent owner demonstrate, in a motion to amend, making a good faith attempt to determine whether any prior art known to it discloses the additional limitations introduced in the proposed amended claims, even where a large number of prior art references have been cited in related applications. Continue reading

Miscues in Service of the Petition Found Harmless in Granted Institution IPR2015-01466

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Takeaway: A petitioner’s miscues in serving the petition may be deemed harmless by the Board where the patent owner could still timely file a response to the petition and suffers no prejudice.

In its Decision, the Board instituted inter partes review of the ‘077 patent as to claims 22, 27, 29, 31, 32, 39, and 40. “The ’077 patent discusses a control, monitoring, and/or security apparatus and method for vehicles or premises” that “allows an owner, occupant, or other authorized individual to control or to perform various monitoring and security tasks in regards to a premises from a remote location and at any time.” Continue reading

Denying Request for Rehearing Decision on Institution IPR2015-00943

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Takeaway: A request for rehearing of a denial of institution is denied where the Board did not overlook or misapprehend any relevant matters in making its decision.

In its Decision, the Board denied Petitioner’s request for rehearing of its denial of institution of inter partes review of the ’521 patent. Petitioner had argued that the Decision failed to apply broadest reasonable construction and misapprehended or overlooked several matters in the Petition. The Board was not persuaded by any of the arguments. Continue reading

Denial Of Request for Rehearing Of Final Written Decision That Alleged Secondary Considerations Without Sufficient Evidence IPR2013-00549

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Takeaway: Patent Owner should provide specific citations to paragraphs or portions of evidence it seeks to rely upon in its assertion of secondary considerations, rather than attempt to incorporate by reference or otherwise make broad contentions regarding secondary considerations.

In its Decision, the Board denied Patent Owner’s request for rehearing. The Board modified its Decision to replace the word “captioned” with the word “voice-to-text.” This modification, however, does not affect the substance of the underlying Decision. Continue reading

Nexus Between Secondary Consideration And Claims Was Not Sufficient IPR2014-01449

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Takeaway: A consent judgment is not sufficient evidence that a product is within the scope of a claim in order for the secondary consideration of objective evidence of non-obviousness tied to that product to be given substantial weight.

In its Final Written Decision, the Board determined that Petitioner has shown by a preponderance of the evidence that claims 40-53 of the ’057 patent are unpatentable. The Board also denied Patent Owner’s Motion to Seal and proposed protective order.  According to the Board, the ’057 patent relates to a cryptographic serial Advanced Technology Attachment (ATA) apparatus and method. Continue reading

Final Written Decision Concluding Unpatentability in view of Previously-Cited Reference IPR2014-01084

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Takeaway: Whether a prior art reference was previously taken into account by the Patent Office may be a relevant consideration for the Board in an institution decision under 35 U.S.C. § 325(d), but may not be a relevant consideration when determining whether a petitioner has established unpatentability by a preponderance of the evidence. Continue reading

Decision Denying Institution of Inter Partes Review IPR2015-01329

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Takeaway: A petitioner’s obviousness argument should be consistent with its claim construction proposal.

In its Decision, the Board declined to institute inter partes review as to any of the challenged claims (1, 4, and 7) of the ’586 Patent. The ’586 Patent is directed to a method for managing one or more networked computer systems (an “enterprise”).

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Institution of Post-Grant Review of a Patent Issuing from a Transition Application PGR2015-00017

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Takeaway: The inquiry into whether a patent issued from a transition application is subject to the AIA first inventor to file statutory provisions and, thus, available for post-grant review turns on whether the patent contains a claim that has an effective filing date on or after March 16, 2013.

In its Institution Decision, the Board instituted Post-Grant Review of the ‘395 patent. The ‘395 patent discloses “a method and apparatus to identify at least one component from a plurality of components in a fluid mixture,” including “a detector apparatus which detects and identifies selected components” and “a laser which emits a laser beam which damages or kills selected components of the plurality of components.” The Board found that claims 1-14 of the ‘395 patent were more likely than not unpatentable. Continue reading