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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Denying Joinder With Terminated Proceeding and Denying Institution IPR2016-00414

Takeaway: The one year bar to granting a petition for inter partes review does not apply to a motion for joinder, but the Board will not grant joinder to a terminated proceeding.

In its Decision, the Board denied a Motion for Joinder and Petition requesting inter partes review of the ‘216 patent.  Petitioner had requested to join a petition “instituted on the same grounds of unpatentability over the same claims at issue in this proceeding.” Continue reading

Petition for Inter Partes Review Denied IPR2016-00267

Takeaway: In order to prevail on obvious grounds at institution, a petitioner must not only show where each limitation is disclosed in the prior art, but also an adequate motivation to combine the references.

In its Decision, the Board denied review of any of the challenged claims (1-55) of the ’816 Patent. The ’816 Patent describes a system for conducting video visits between two participants, such as prison inmates and outside visitors.

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Disclaimed Claims Will Not Be Considered In Eligibility of Business Method Review CBM2016-00016

Takeaway: If a patent owner disclaims claims when filing a preliminary patent owner response, those claims cannot be considered in the analysis of whether the patent is eligible for covered business method patent review.

In its Decision, the Board denied covered business method patent review of the challenged claims (1-19) of the ’957 Patent. The ’957 Patent relates to Geographic Information Systems (“GIS”), and, in particular, to a National Online Parcel-Level Map Data Porta (“NPDP”) that provides online delivery of parcel-level map data.

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Institution Granted-In-Part Where Patent Not Entitled to Earlier Filing Date IPR2016-00061

Takeaway: The written description requirement is not satisfied by subject matter that is not disclosed but would be obvious over what is disclosed.

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo.

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Institution Granted Where Claims Not Entitled to Earlier Priority IPR2016-00061

Takeaway: The written description requirement is not satisfied by “subject matter which is not disclosed but would be obvious over what is expressly disclosed.”

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8 of the ’593 Patent. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo. Continue reading

Denying Institution where Petition Found to be Based on Mere Probability or Possibility in Prior Art Reference IPR2015-01543

Takeaway: Mere probability or possibility in a prior art reference disclosure falls short of demonstrating that the missing descriptive matter is necessarily present.

In its Decision, the Board concluded that Petitioner did not establish a reasonable likelihood of prevailing as to its challenge of claims 11-19 and 39-47 of the ’581 patent. The ’581 patent relates to “a system and method for collecting information about a device or user of the device.”  Petitioner asserted three grounds of unpatentability based primarily on the Seiffert and Fawcett references, which the Board treated as seven separate grounds. Continue reading

Decision Partially Granting Institution Based on References Considered During Prosecution IPR2016-00055

Takeaway: Arguments against institution based on prior art having been considered during prosecution may be more successful where a patent owner can direct the Board to a substantive discussion of the references in the record or where the Examiner considered a challenge to the claims in the same or substantially the same manner presented in the petition.

In its Decision, the Board instituted inter partes review of claims 1-24 and 29 of the ‘717 patent, where Petitioner had sought review of claims 1-30. The ‘717 patent is generally directed to a “programmable communicator device.” Continue reading

Institution of CBM Review Denied CBM2015-00184

Takeaway: When showing that a patent does not recite a technological feature that is novel or unobvious over the prior art, the petitioner must analyze the question by looking at how each claim of the patent combines the individual components into an ordered whole.

In its Decision, the Board found that it was not more likely than not that at least one of the challenged claims (1-49) of the ’002 Patent is unpatentable, and denied institution of covered business method patent review. The ’002 Patent describes a system and method for using a mobile interface agent (“MIA”) to access information of a user.

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