Final Written Decision Finding Certain of the Challenged Claims Unpatentable IPR2015-00309

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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

Denying Request to Modify Final Written Decision After Appeal to Federal Circuit CBM2013-00035

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

Final Written Decision with Dissent Differing with Majority’s Technical Analysis IPR2014-01374

Takeaway: Based on their technical backgrounds, judges at the Board are capable of addressing very technical arguments related to the disclosure of prior art and may not always agree with the technical analysis of the other judges on the Board’s panel.

In its Final Written Decision, the Board held that Petitioner had not established by a preponderance of the evidence unpatentability of the challenged claims. The Board also dismissed the parties’ Motions to Exclude Evidence.  Judge Clements dissented from the opinion of the Board. Continue reading

Final Written Decision Finding Some Challenged Claims Unpatentable IPR2015-00093

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

Final Written Decision Finding No Inconsistency between Expert Testimony and Earlier Paper by Same Expert IPR2015-00009

Takeaway: A declarant’s prior statements acknowledging an inventor being the first to report on claimed subject matter may not be inconsistent with later testimony that the same subject matter is unpatentable based on a patent prior art reference because patent references are not necessarily part of the body of work reported in academic literature.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ’503 patent are unpatentable. The ’503 patent “is directed to a microfluidic device for analyzing and/or sorting biological materials. Continue reading

Final Written Decision Finding Claims Unpatentable and Real Party in Interest Satisfied IPR2015-00059

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

Motion to Amend GRANTED IPR2015-00208

Takeaway: In a motion to amend, there is no requirement for a patent owner to analyze expressly every individual reference cited during prosecution of the challenged patent. A patent owner can group references together according to their particular teachings without having to present on each and every reference giving rise to that same teaching.

In its Final Written Decision, the Board found that the challenged claims (1-5) of the ’897 Patent are unpatentable, and granted Patent Owner’s Motion to Amend to add substitute claims 6-10. The ’897 Patent is drawn to a method of handling a wheel of a motor vehicle while the vehicle is elevated on a hydraulic lift or hoist for repair by a service technician.

Continue reading

Final Written Decision Finding Insufficient Articulated Reasoning Presented in Support of Obviousness Grounds IPR2015-00155

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

Final Written Decision Revising Previous “Means” Construction In View of Williamson v. Citrix IPR2015-00298

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

Collateral Estoppel Based on Ex Parte Reexam Found Not Applicable in Final Written Decision IPR2015-00169

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