Final Written Decision CBM2013-00037
all challenged claims found unpatentable

Posted on February 19, 2015 by

Takeaway: The Board may construe the phrase “computer implemented method” recited in a claim in a manner that does not foreclose the possibility of some of the method steps being performed manually.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-14 of the ’937 patent are unpatentable. The Board also addressed certain Motions to Exclude that Petitioner had filed, and denied Patent Owner’s Motion to Amend. Continue reading →

Final Written Decision IPR2013-00479

Posted on February 16, 2015 by

Takeaway: To establish a nexus between commercial success of a computer-related product and a challenged patent claim, evidence beyond publicly-available, generalized hearsay statements is likely to be required, and could even include evidence such as source code.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that all challenged claims (claims 18-20, 45, 48, 49, 51, and 54) of the ‘494 patent are unpatentable. The ‘494 patent “relates to computerized research on databases” and “discloses that it improves search methods by indexing data using proximity indexing techniques.” Continue reading →

Final Written Decision IPR2013-00480
4 challenged claims not found unpatentable; 1 claim found unpatentable; and 5 claims canceled by Patent Owner

Posted on February 10, 2015 by

Takeaway: If circumstances dictate, the Board may construe the steps in a method claim to require a specific arrangement with respect to order in which the steps are performed.

In its Final Written Decision, the Board determined that Petitioner had shown by a preponderance of the evidence that claim 14 of the ’494 patent is unpatentable. The Board determined that Petitioner had not shown that claims 1, 5, 15, and 16 of the ’494 patent are unpatentable, however. The Board also granted Patent Owner’s Motion to Amend canceling claims 8, 10, 11, 35, and 40 of the ’494 patent, and denied Patent Owner’s Motion to Exclude the Reply Declaration of Dr. Edward A. Fox (Exhibit 1028). Continue reading →

Final Written Decision IPR2013-00468

Posted on February 9, 2015 by

Takeaway: For secondary considerations to be persuasive, Patent Owner must show a nexus between the secondary consideration and the challenged claims and explain in detail why it was the unique characteristics of the claimed invention that resulted in the secondary consideration.

In its Final Written Decision, the Board held that Petitioner had demonstrated by a preponderance of the evidence that all of the challenged claims 1-37 of the ’192 patent are unpatentable as obvious over Wright Jr. alone or in combination with Goodman. The ’192 patent relates to a networked system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs. Continue reading →

Final Written Decision CBM2013-00033

Posted on February 6, 2015 by

Takeaway: A petitioner must establish that a document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7-16 and 23-27 of the ‘679 patent are unpatentable but failed to demonstrate that claims 1-6 and 17-22 are unpatentable. The ‘679 patent “relates to a system and method for peer-to-peer advertising between mobile communication devices.” Continue reading →

Federal Circuit Decision Affirming the Board – In re Cuozzo Speed Technologies, LLC
IPR2012-00001

Posted on February 4, 2015 by

Takeaway: Decisions by the Board to institute inter partes review are not appealable, and once an inter partes review proceeding has been instituted, the appropriate claim construction standard to be used for an unexpired patent is the broadest reasonable interpretation standard.

In its Decision, the U.S. Court of Appeals for the Federal Circuit held that decisions to institute inter partes review by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board are not appealable. The Federal Circuit also held that the “broadest reasonable interpretation” standard used by the Board in its claim construction analysis was correct. Finally, the Federal Circuit affirmed the Board’s finding that the challenged claims of the ’074 patent related to a navigation system are invalid. Continue reading →

Final Written Decision IPR2013-00459

Posted on February 3, 2015 by

Takeaway: The Board may request the parties to provide claim interpretations for a claim term for the first time at the oral hearing.

In its Final Written Decision, the Board held that Petitioner had failed to demonstrate by a preponderance of the evidence that claims 1, 2, 4, 11-14, and 16 of the ’475 patent are unpatentable. Thus, none of the challenged claims were found unpatentable. The ’475 patent relates to a method for processing a III-Nitride epitaxial layer system on a substrate. The III-Nitrides being used for producing light-emitting devices including light-emitting diodes (LEDs) and lasers. Continue reading →

Denying Request for Rehearing of Final Written Decision IPR2013-00322

Posted on January 30, 2015 by

Takeaway: A showing that a reference discloses a means-plus-function element requires showing that the reference discloses the corresponding structure in the context of performing the recited function.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s determination in the previously-rendered Final Written Decision. The Board indicated that it had considered the Request for Rehearing but nonetheless elected to decline to modify the Decision. Continue reading →

Final Written Decision IPR2013-00431

Posted on January 29, 2015 by

Takeaway: To successfully assert secondary considerations such as commercial success and industry praise, Patent Owner must establish a nexus between the claimed invention and the commercial success or industry praise.

In its Final Written Decision, the Board found that Petitioner had established by a preponderance of the evidence that claims 1-16 of the ’186 Patent are unpatentable. The Board also dismissed as moot both Petitioner’s and Patent Owner’s Motions to Exclude Evidence and considered Patent Owner’s observations to the cross-examination testimony of Dr. Stone, who was cross-examined after Petitioner filed its Reply. Continue reading →

Final Written Decision IPR2013-00424

Posted on January 27, 2015 by

Takeaway: Although, in general, the process by which a product is made is irrelevant in a product claim, the process may provide evidence of no anticipation where the process imparts structural and functional differences over the prior art.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that the challenged claims of the ‘000 patent are unpatentable. Continue reading →

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