Instituting CBM Review for Patent with Claim Encompassing Transitory, Propagating Signal CBM2015-00182

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Takeaway: A claim that encompasses a transitory, propagating signal is not patent eligible, and adding the phrase “having program code recorded thereon” to limit computer readable medium does not necessarily limit the medium to non-transitory media.

In its Decision, the Board instituted covered business method (CBM) review, finding that Petitioner demonstrated that it is more likely than not that the challenged claims of the ’132 patent are unpatentable. A request by Patent Owner to expand the panel for the decision to institute was also denied. Continue reading

Institution Denied IPR2015-01792

Takeaway: If a patent owner presents evidence of secondary considerations of non-obviousness, a petition asserting obviousness should address the evidence substantively.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims (1-10) of the ’522 Patent, and denied institution of inter partes review. The ’522 Patent is directed in part to polynucleotides encoding the extracellular region of an insoluble human TNF receptor (“TNF-R”).

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Denying Institution Where Obviousness Rationale Was Already Addressed in Prior Art IPR2015-01921

Takeaway: A petitioner’s stated rationale to combine certain prior art may be found unpersuasive where the purported motivation is predicated on solving a problem already addressed by the same prior art.

In its Decision, the Board denied institution of inter partes review of claims 1-3 of the ‘502 patent. The ‘502 patent is titled “Vehicle Arresting Blocks, Beds And Methods” and “relates to arresting the forward motion of vehicles, such as aircraft overrunning a runway.” Continue reading

Motion to Terminate Denied IPR2015-00739

Takeaway: The statutory requirements under 35 U.S.C. § 312(a) for consideration of a petition are not jurisdictional. Therefore, the Board can allow a petitioner to rectify a lapse in compliance without terminating the proceedings.

In its Decision, the Board denied Patent Owner’s Motion to Terminate the Proceeding based upon lack of jurisdiction of the Board to institute inter partes review.

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Denying Institution where Effective Filing Date had been Alleged to Correspond to Date of Later-Filed Amendment PGR2015-00023

Takeaway: The date of later-filed claim amendments is not relevant to the determination of an effective filing date for purposes of establishing eligibility for post-grant review.

In its Decision, the Board, denying institution, found that Petitioner “[had failed] to demonstrate that that the ’638 patent is eligible for post-grant review.” The ’638 patent “relates to an automated system for real-time classification of pitches thrown by a pitcher in the course of a baseball game.” Continue reading

Board Denied Institution, Finding that Full Alice Analysis had not been Provided CBM2015-00154

Takeaway: A failure to perform a full analysis of subject matter eligibility under 35 U.S.C. § 101 is a failure to identify challenged grounds with particularity as required by 37 C.F.R. § 42.304(b)(4) and 35 U.S.C. § 322(a)(3).

In its Decision, the Board denied institution of covered business method patent review, finding that the “Petition does not demonstrate it is more likely than not that Petitioner would prevail with respect to claims 1–34, 38, 39, and 45–77 of the ’918 patent.” The ’918 patent “relates to ‘redemption games allowing a player to receive one or more prizes in connection with playing the game.’” Continue reading

Institution Denied IPR2015-01784

Takeaway: In order to rely upon the dimensions of drawings in a prior art patent as a disclosure of a certain depth or length, the patent must affirmatively state that the drawings are drawn to scale.

In its Decision, the Board determined that Petitioner had not shown that there is a reasonable likelihood that it would prevail with respect to any of the challenged claims (15, 17-19, 21, 25-27, and 30-32) of the ’443 Patent. The ’443 Patent generally relates to a surface structure produced on an outer surface of a dental implant or fixture for a range of implants related to different types of qualities of jaw bone.

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Allegations of Inequitable Conduct Disregarded in Decision Denying Institution IPR2015-01897

Takeaway: Allegations tantamount to inequitable conduct are not proper in a petition for inter partes review and will be disregarded.

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ‘494 patent. The ‘494 patent is entitled “Malicious Mobile Code Runtime Monitoring System and Methods” and claimed priority to seven earlier-filed applications. Continue reading

Decision Granting Joinder and Instituting Inter Partes Review IPR2016-00089

Takeaway: Joinder may be appropriate where a later-filed petitioner agrees to proceed based only upon the arguments and evidence advanced by an earlier-filed petitioner and accept a back-seat role, without any right to separate or additional briefing or discovery, unless authorized by the Board or the earlier-filed petitioner drops out of the proceedings.

In its Decision, the Board granted Petitioner’s motion for joinder and instituted inter partes review of claims 1-30 of the ‘131 patent. Petitioner sought to join a pending proceeding against claims 1-30 of the ‘131 patent, Lupin Ltd. et al. v. Senju Pharm. Co., Case IPR2015-01097. Continue reading

Burden to Establish Earlier Priority Date on Patent Owner in Decision Instituting Post-Grant Review PGR2015-00022

Takeaway: There is no initial burden on a petitioner to rebut a priority date, but including such an argument in a petition may be advisable because there is generally no opportunity to submit additional evidence or argument at the institution stage after the patent owner’s preliminary response.

In its Decision, the Board instituted Post-Grant Review of the ‘292 patent. The ‘292 patent is titled “Multi-Spectrum Lighting Device with Plurality of Switches” and “generally describes a multi-spectrum emitting device” that is “capable of emitting a first spectrum and a second spectrum and includes switching elements configured to change the emitted light from the first spectrum to the second spectrum.” Continue reading