Motion to Amend GRANTED IPR2015-00208

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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.

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CBM2014-00182 Challenged Claims Unpatentable

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

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 All Claims Unpatentable Subject Matter CBM2014-00171

Takeaway: The Board may refuse to adopt a district court claim construction ruling, even if the Board considers the construction under the Phillips standard.

In its Final Written Decision, the Board determined that all of the challenged claims of the ’740 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’740 Patent relates generally “to a method and system for entering data relating to an insurance claim for a damaged vehicle,” wherein the “data is processed into a valuation report that is transmitted through the world wide web.”

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Claims Unpatentable and Motion to Amend to Correct Typographical Errors Denied in Final Written Decision IPR2014-01278

Takeaway: A motion to amend to correct typographical errors is not proper if such an amendment does not respond to a ground of unpatentability involved in the trial as required under the rules.

In its Final Written Decision, the Board found all challenged claims of the ‘222 patent unpatentable under 35 U.S.C. § 103(a) and denied Patent Owner’s Motion to Amend. The ‘222 patent “relates to information technology (‘IT’) management and the collection of data from networks that span a wide range of institutions, including correctional facilities, without regard to which jurisdiction the source of data belongs.” Continue reading

Final Written Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend IPR2014-01154

Takeaway: A patent owner’s duty of candor and good faith to the Board may require that the patent owner demonstrate, in a motion to amend, making a good faith attempt to determine whether any prior art known to it discloses the additional limitations introduced in the proposed amended claims, even where a large number of prior art references have been cited in related applications. Continue reading

Final Written Decision Denying Motion to Amend IPR2014-01361

Takeaway: In a motion to amend, a patent owner bears the burden of demonstrating that a proposed claim amendment responds to a ground of unpatentability involved in the trial, does not seek to enlarge the scope of the claims or introduce new subject matter, proposes a reasonable number of substitute claims, is supported in the original disclosure, and is patentable over the prior art of record.

In its Final Written Decision, the Board determined that claims 1-43 of the ‘117 patent are unpatentable under 35 U.S.C. § 103 and that Patent Owner had not demonstrated that proposed substitute claims 44 and 45 are patentable over the prior art of record. The ‘117 patent “is directed to an electrolyte for high voltage wet tantalum or aluminum capacitors.” Following institution of trial, Patent Owner conceded “that no claims of the ‘117 patent are patentable over the grounds set forth in the Petition” and “filed a non-contingent motion to amend the claims of the ‘117 patent.” Continue reading

Reverse Auction Claims Found Ineligible for Patent Protection CBM2014-00119

Takeaway: Claims involving a conventional system interface, routine data gathering, and routine calculations will likely be found patent ineligible under § 101.

In its Final Written Decision, the Board found that all of the challenged claims (1-39) of the ’211 Patent are unpatentable under 35 U.S.C. § 101, and denied Patent Owner’s Motion to Amend. The ’211 Patent is drawn to a method of conducting a telephone- or Internet-based reverse auction, where the reverse auction is transmitted to users on a medium. Continue reading

Motion to Amend Denied For Failure to Explain Patentability Over Prior Art of Record IPR2014-00532

Takeaway: In a motion to amend, the patent owner is not required to prove that the claims are patentable over every item of prior art known to a person of ordinary skill, but the patent owner is required to explain why the claims are patentable over the prior art of record.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claim 1-4, 6, 8-11, 13, and 15 of the ’633 patent are unpatentable. The Board denied Patent Owner’s Motion to Amend. Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00351

Takeaway: If a petitioner provides testimonial evidence, then a patent owner should provide testimonial counterevidence in its response in order to adequately rebut petitioner’s arguments.

In its Final Written Decision, the Board found that all challenged claims (claims 1,13, and 14) of the ’262 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’262 Patent relates to an electric cooking appliance, known as a deep well cooker, for preparing and serving hot foods. Continue reading