Denying Institution for Failing to Name All Real Parties-in-Interest IPR2015-01420

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Takeaway: The Board may deny institution of a petition that does not name all the real parties-in-interest where affording a new filing date would be futile for being past the one-year bar date.

In its Decision, the Board denied institution of inter partes review for failing to specify all real parties-in-interest in the Petition. In its Preliminary Response, Patent Owner “alleged that Yankon Industries, Inc. (‘Yankon-US’), as well as Lowe’s Companies, Inc. and Lowe’s Home Centers, LLC (collectively, ‘Lowe’s’) should have been identified as real parties-in-interest in the Petition, pursuant to 35 U.S.C. § 312(a)(2).” The Board sua sponte authorized Yankon- China to submit briefing and evidence addressing the real party-in-interest issues. Upon consideration of the “totality of the circumstances,” the Board was “persuaded that Yankon-China should have identified Yankon-US as a real party-in-interest in the Petition.” Continue reading

Granting Institution of One Asserted Ground of Unpatentability IPR2015-00506

Denied grounds did not adequately establish obviousness and, in one instance, relied upon a document not provided with the petition.

Takeaway: Institution of a ground of unpatentability relying upon a prior art published patent application may be denied where, instead of providing a copy of the published application, a copy of the non-prior art patent that issued from the published application is provided with the petition.

In its Decision, the Board found that Petitioner had shown that there is a reasonable likelihood that it would prevail with respect to the challenged claims 1-5 of the ‘973 patent, and instituted trial. The ‘973 patent is directed to light emitting panel assemblies. Petitioner challenged claims 1-5 on five grounds. Continue reading

Denying Motion to Dismiss Petition IPR2015-00519

Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.” Continue reading

Granting Motion to Correct Filing Date IPR2015-00239, 240, 241, 242, 243, 247

Takeaway: A petition that is filed late due to a petitioner’s failure to electronically submit a petition in PRPS may still be accorded an earlier filing date if the failure was due to an inadvertent clerical error and all statutory requirements had been otherwise satisfied.

In its Decision, the Board granted Petitioner’s motion to correct the filing date and accorded the Petition a filing date of November 6, 2014. The Board explained that the “purpose of a petition is to give adequate notice to a patent owner of the basis for relief by laying out the grounds of unpatentability proposed by a petitioner, as well as any supporting evidence.” Continue reading

Decision on Motion to Correct Filing Date IPR2014-00367

Takeaway: The Board may grant a motion to correct a petition filing date if it can be shown that the inadvertent submission of an incorrect document in place of an intended exhibit was the result of clerical error.

In its Decision, the Board granted Petitioner’s Motion to Correct the Petition Filing Date, which Patent Owner did not oppose.  In particular, the Board accorded the Petition a filing date of January 18, 2014. Continue reading