CBM2014-00182 Challenged Claims Unpatentable

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Takeaway: A patent owner’s motion to amend will not be granted when the proposed claims enlarge the scope of the original claims by rewriting limitations.

In its Final Written Decision, the Board found that claims 33-60 of the ’281 Patent are unpatentable, granted Patent Owner’s Motion to Amend to cancel claims 1-32 of the ’281 Patent, and denied Patent Owner’s Motion to amend to add proposed substitute claims 61-68. The ’281 Patent discloses an apparatus for protecting data.

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Evidence Supporting Prior Art Status of Reference Permitted with Reply in Final Written Decision Finding Challenged Claims Unpatentable IPR2015-00052

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Takeaway: Because the threshold for instituting trial is different than the threshold for proving unpatentability of a claim in trial, a petitioner may be allowed submit evidence supporting the prior art status of a challenged reference in its reply.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims of the ‘944 patent are unpatentable under 35 U.S.C. § 103. The ‘944 patent “relates to backing up and restoring file systems” by “copying information describing changes in the file system since a previous point in time.” Continue reading

Challenged Claims Not Patent Eligible in Final Written Decision CBM2014-00184

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Takeaway: Questions on preemption are inherent in and resolved by the Board’s § 101 analysis; thus, while preemption may signal subject matter that is not patent eligible, the absence of complete preemption does not demonstrate patent eligibility.

In its Final Written Decision, the Board found claims 1-7 of the ‘214 patent to be unpatentable. The ‘214 patent “relates to an affiliate manipulation system that permits consumers, Internet Service Providers (ISPs), search engines, and intermediaries to maximize affiliate program participation in transactions by or through them.” Continue reading

Final Written Decision Finding Claims Unpatentable IPR2015-00122

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Takeaway: If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

In its Final Written Decision, the Board found the challenged claims of the ‘063 patent to be unpatentable as obvious. The ‘063 patent “relates to the automatic conversion of non-negotiable credits to funds.” “In particular, an entity and a commerce partner agree to permit transfers or conversions of non-negotiable credits to entity independent funds in accordance with a fixed credits-to-funds ratio” and the “conversion allows the user to make a purchase from the commerce partner who accepts as payment the converted loyalty points.” Continue reading

Request for Rehearing of Final Written Decision Denied IPR2014-00688

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Takeaway: Evidence of failure to include a real party-in-interest that is presented after entry of a final written decision will not be considered because it is late.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision regarding claims 1 and 15 of the ’607 Patent. The Board noted that a Final Written Decision is reviewed for abuse of discretion, and the party requesting rehearing bears the burden of showing that the Final Written Decision should be modified.  The Request must identify all matters the party believes were misapprehended or overlooked.

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Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-01416

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Takeaway: When analyzing patentability, the Board will not hold the asserted prior art to a different standard than the claimed invention.

In its Final Written Decision, the Board found the challenged claims of the ’634 patent unpatentable. The ’634 patent “describes a hybrid vehicle with an internal combustion engine, an electric motor, and a battery bank, all controlled by a microprocessor that controls the direction of torque transfer between the engine, motor, and drive wheels of the vehicle.” Continue reading

Final Written Decision finding Displayed Poster to be a Printed Publication IPR2014-00513

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Takeaway: A poster that is displayed may be considered a printed publication where the intended audience of the poster session necessarily includes interested persons of ordinary skill in the art pertinent to the challenged claims.

In its Final Written Decision, the Board found that Petitioner had proven that claim 10 is unpatentable as obvious, but had not proven the unpatentability of claims 17 and 18. The Board also granted Patent Owner’s Motion to Amend and denied its Motion to Exclude Evidence. The ’550 patent “discloses using a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.” Continue reading

Final Written Decision Finding Obviousness Based on Combination of References with Nearly Identical Embodiments IPR2014-01283

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Takeaway: In an obviousness combination, the required rationale to combine two references disclosing nearly identical embodiments may be lower as compared to combining two references having few similarities or references which are from widely different fields of endeavor.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 1-17 of the ’457 patent are unpatentable. The ’457 patent “is directed to systems and methods for monitoring activity of detainees, based on gang affiliation, through search and correlation of one or more databases.” Continue reading

Final Written Decision finding Challenged Claims Unpatentable under 35 U.S.C. 101 CBM2015-00012

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Takeaway: The mere existence of a non-preempted use of an abstract idea does not prove that a claim recites patent-eligible subject matter.

In its Final Written Decision, the Board found that Petitioner demonstrated by a preponderance of the evidence that claims 7, 8, 26, and 27 of the ’947 patent are unpatentable. The ’947 patent “describes a method and system for making loans such as mortgages.” Continue reading

Final Written Decision Finding Challenged Claims Unpatentable Where Patent Owner’s Proposed Claim Construction Was Too Narrow IPR2014-01297

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Takeaway: When proposing a claim construction from a corresponding litigation or other related proceeding, the proposing party must provide sufficient reasoning for the proposed construction – such as support in the specification – and must address any conflicting constructions previously proposed by the Board.

In its Final Written Decision, the Board found that each of challenged claims 33-39 of the ‘057 patent was unpatentable. The Board denied Patent Owner’s Motion to Seal as well, opting instead to enter the Board’s default Protective Order.

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