Denial of Petitioner’s Rehearing Request for Raising New Unpatentability Arguments PGR2015-00022

Share

Takeaway: An attempt to supplement unpatentability reasoning not set forth in the petition is not a basis for granting a request for rehearing.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution of post-grant review. In the Board’s Institution Decision, the Board granted the Petition and initiated post-grant review as to certain claims of the ‘292 patent, but denied the Petition as to other claims. Continue reading

Denying Institution because Petitioner Found to Lack Standing CBM2015-00180

Share

Takeaway: To establish a supplier’s privity for standing purposes in a CBM review in relation to customers that have been sued for infringement, a supplier should present evidence tying the customers’ accused products to the supplier’s products as well as evidence showing the supplier’s obligation to indemnify its customers.

In its Decision, the Board denied institution of any covered business method patent review because Petitioner lacked standing. Petitioner Phoenix Licensing was the sole remaining petitioner after several parties had been terminated from the proceeding.  Because Phoenix Licensing itself did not have standing, the Board denied institution. Continue reading

Institution of Inter Partes Review Denied IPR2015-01932

Share

Takeaway: Simply stating that art is analogous and in the same field of endeavor is not enough to establish that it would have been obvious to combine the features of the art.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1, 3-4, 6-10, 12-15, 17-18, and 20-22) of the ’872 Patent.  The ’872 Patent relates generally to a method for selecting and allocating a seat or group of seats to a ticketed event, such as a sporting or concert event.

Continue reading

Patent Not Entitled to Filing Date of Provisional Because Claims Not Supported By The Provisional IPR2015-01835

Share

Takeaway: A reasonable expectation of success is not absolute predictability of success.

In its Decision, the Board determined that Petitioner had established a reasonable likelihood of prevailing in showing the unpatentability with respect to at least one IPR of claims 1-10 of the ’135 patent. Continue reading

A Showing That Third Party Is An Executor Or Board Member Is Insufficient For Real-Parties-In-Interest IPR2015-01769

Share

Takeaway: Merely being an alleged executor or board member of Petitioner does not establish sufficiently that the individuals identified, in their individual capacities, exercise control or have an opportunity to exercise control of the proceeding, as opposed to in their capacities as executives or board members of Petitioner.

In its Decision, the Board determined that Petitioner had demonstrated that there is a reasonable likelihood that it would prevail with respect to at least one of claims 1-7 of the ’433 patent. Continue reading

Evidence Lacking To Show Genus Anticipated Later-claimed Species IPR2015-01723

Share

Takeaway: To anticipate a later-claimed species, a pattern of preferences or other related teaching or suggestion must lead to a genus small enough that a person of ordinary skill in the art would at once envisage the claimed species.

In its Decision, the Board declined to institute inter partes review of claims 1-13, 20-27, and 34-61 of the ’208 patent because Petitioner had not established that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Continue reading

Document Is Prior Art Via Public Dissemination Or By Being Made Sufficiently Available IPR2015-01651

Share

Takeaway: A document can become prior art by way of public dissemination or by being made sufficiently available to the public (e.g., via a search engine).

In its Decision, the Board instituted inter partes review of claims 1-20 of the ’271 patent.

According to the Board, the ’271 patent relates to a bottle cap (i.e., crown cap) that is made with thinner and harder steel compared to conventional crown caps. Petitioner asserted the following challenges to the ’271 patent: (1) claims 1-4, 10, 12-15, and 17-20 as obvious over Frishman and Industrial Heating; (2) claims 11 and 16 as obvious over Frishman, Industrial Heating, and Wagner; (3) claims 1-4 and 10-20 as obvious over Industrial Heating and Wagner; (4) claims 5-9 as obvious over Frishman, Industrial Heating, Mumford, and U.S. Steel; and (5) claims 5-9 as obvious over Industrial Heating, Wagner, Mumford, and U.S. Steel. Petitioner asserted that “average hardness” is hardness plus variations, and that “hardness” refers to Rockwell Hardness. Patent Owner did not dispute these assertions. Continue reading

Decision Denying Institution Of Inter Partes Review IPR2015-01784

Share

Takeaway: Patent drawings do not define precise proportions of depicted elements and thus may not be relied upon to show particular sizes if the specification is completely silent on the issue.

In its Decision, the Board denied the Petition for inter partes review. In the course of doing so, the Board found that Petitioner had not shown a reasonable likelihood that it would succeed in proving any of the challenged claims of the ‘443 patent to have been obvious.

Continue reading

Institution Granted Where SEC Filing Found to be Printed Publication IPR2015-01853

Share

Takeaway: The ability to search an SEC form based on the technical content contained therein is not a requirement for such a form to qualify as a printed publication where other means exist to allow one to locate the document upon exercising reasonable diligence.

In its Institution Decision, the Board instituted inter partes review of claims 1-3, 5-8, and 10-41 of the ’826 patent. The ’826 patent “relates to methods of using a sustained release oral dosage form of an aminopyridine composition to treat a neurological disorder, such as multiple sclerosis (‘MS’), by maximizing the therapeutic effect, while minimizing adverse side effects.” Continue reading