Takeaway: The Board may dismiss challenges to dependent claims where the claims do not further limit the claims from which they depend and where correction of the claims would be subject to reasonable debate.
In its Final Written Decision, the Board found Petitioner had shown by a preponderance of the evidence that challenged claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 of the ‘981 patent are unpatentable, “but has failed to do so for claims 3-5 and 12-15.” The Board further dismissed the Petition with respect to claims 18-20 for improper dependency. The ‘981 patent “is directed to methods and systems for seismic surveying, including firing at least two energy sources in multiple firing sequences.” Continue reading
Takeaway: The Board may decline to modify a Final Written Decision that was reviewed by the Federal Circuit even where the Final Written Decision includes an error cancelling claims that should not have been included in the ground of unpatentability.
In its Order, the Board denied Patent Owner’s request that the Office not publish a certificate to cancel claims 8-12, 14, and 23 of the ‘516 patent. Patent Owner alleged that the Final Written Decision entered on December 17, 2014 includes an error—“namely, claims 8-12, 14, and 23, which depend from claim 1 and not claim 2, should not have been included in the anticipation ground of unpatentability.” Continue reading
Takeaway: A party should include arguments that account for the possibility that the Board will not adopt a party’s preferred construction in order to prevent the Board ruling in favor of the opposing party based on the rejection of the party’s claim construction.
In its Final Written Decision, the Board found that Petitioner had shown that claims 1-6 and 9-28 of the ’220 Patent are unpatentable, but that Petitioner did not demonstrate that claims 7 and 8 are unpatentable. The ’220 Patent discloses a system for detecting an event at a premises and supplying information regarding the event to a website that various authorized users can access. Continue reading
Takeaway: The key to a real party-in-interest inquiry is the relationship between the potential unnamed real party-in-interest and the proceeding, not the relationship between parties.
In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ‘781 patent are unpatentable as anticipated by Divsalar and rejected Patent Owner’s argument that the Petition failed to name all real parties-in-interest. The ‘781 patent “describes the serial concatenation of interleaved convolutional codes forming turbo-like codes.” Continue reading
Takeaway: An obviousness conclusion cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion.
In its Final Written Decision, the Board found that Petitioner did not show by a preponderance of the evidence that the challenged claims are unpatentable. The ’243 patent “relates to “telephone communication systems in penal institutions or similar facilities.” Continue reading
Takeaway: The Board will likely find unpersuasive arguments related to prior art where a petitioner fails to identify corresponding structure in the specification for a means-plus-function limitation.
In its Final Written Decision, the Board found that Petitioner showed by a preponderance of the evidence that claims 1-3, 5, 17, 18, and 20 are unpatentable but failed to show that claims 9-12, 14, and 16 were unpatentable. “The ’849 patent relates to providing instruction on playing a musical instrument, such as a guitar,” and in particular, “an instruction system that displays a graphical representation of a guitar and demonstrates to a user when and how to play a note or chord.” Continue reading
Takeaway: Application of the doctrine of collateral estoppel (issue preclusion)—where a judgment on the merits in a first proceeding precludes relitigation in a second proceeding of issues actually litigated and determined in the first proceeding—requires a final decision in the first proceeding and is discretionary.
In its Final Written Decision, the Board found that Petitioner had not proven that the challenged claims of the ‘167 patent are unpatentable as obvious. The ‘167 patent discloses “edible water-soluble delivery systems in the form of a film composition including a water-soluble polymer, an active component selected from cosmetic agents, pharmaceutical agents, vitamins, bioactive agents and combinations thereof, and at least one anti-tacking agent.” Continue reading