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

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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

Board Requests “List Approach” Over Motion to Strike IPR2015-00615, 00626

Takeaway: The Board prefers a “list approach” in lieu of granting a Motion to Strike material that allegedly exceeds the scope of Patent Owner’s Response because if the Board incorrectly determines that portions of Petitioner’s Reply are beyond the scope of Patent Owner’s Response, those portions would remain in the record for consideration on appeal.

In its Order, the Board authorized Patent Owner to file a list of items that it believes exceeded the scope of Patent Owner’s Response. Petitioner was authorized to submit a response thereto. Continue reading

Granting Motion to Strike Objections for Being Untimely IPR2015-00224

Takeaway: Objections to a declaration submitted with a petition should be served within ten business days of the decision instituting trial.

In its Order, the Board granted Petitioner’s opposed motion to strike Patent Owner’s objections to Petitioner’s evidence. Patent Owner had objected to Petitioner’s declaration submitted with the Petition where the witness allegedly “admitted during his deposition that the opinions he presents in the [declaration] are not based on sufficient facts or data, are not the product of reliable principles and method, and are not reliably applied to the facts of this proceeding.” Continue reading

Declaration Expunged Where Declarant Refused Cross-Examination IPR2014-01198

Takeaway: If a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.

In its Order, the Board granted-in-part, Petitioner’s Motion to Strike the Declaration of Patent Owner’s witness. Patent Owner submitted the Declaration of Francois Lepron with the Patent Owner Response. Mr. Lepron refused to be deposed for personal reasons. The Board authorized Petitioner to file a Motion to Strike the Lepron Declaration and for Patent Owner to file an Opposition to Petitioner’s Motion to Strike. Continue reading

Final Written Decision IPR2013-00417

Takeaway: A librarian’s testimony based on personal knowledge of library practices as to the publication date of an article could be persuasive evidence to establish the prior art date of a publication.

In its Final Written Decision, the Board granted Patent Owner’s Second Motion to Amend Claims, in which every challenged claim was canceled with the exception of claim 9, and found that Petitioner had established by a preponderance of the evidence that claim 9 is unpatentable. The Board also granted-in-part Patent Owner’s Motion to Exclude Evidence and denied Petitioner’s Motion to Strike. Continue reading

Granting Leave to File Motion to Strike Deposition Testimony CBM2014-00102, 106, 108, 112

Takeaway: A Patent Owner should not attempt to discover information concerning the operation of Petitioner’s products during the deposition of Petitioner’s expert if the expert’s declaration does not address the topic and the Board has denied a motion for additional discovery concerning the operation of Petitioner’s products. Even if the Board does not order the Patent Owner to cease its questions concerning the topic, it may authorize a motion to strike and sanction Patent Owner for discovery abuses.

In its Order, the Board authorized Petitioner to file a Motion to Strike questions and answers in the transcript of the deposition of Petitioner’s expert.

Petitioner requested a call with the Board during the deposition of its expert because it objected to the scope of questioning by Patent Owner’s counsel. Continue reading

Order on Conduct of the Proceeding IPR2014-01201

Takeaway: No new testimony evidence is permitted in a preliminary response, but the Board will not consider a motion to strike on the issue because it will decide what is impermissible new testimony evidence in its decision on institution without such a motion.

In its Order, the Board denied authorization to Petitioner to file a motion to strike Patent Owner’s Preliminary Response and denied authorization to Petitioner to file a motion to stay a related ex parte reexamination.  Petitioner requested leave to file a motion to strike Patent Owner’s Preliminary Response for including new testimony evidence that is prohibited by 37 C.F.R. § 42.107(c).  However, the Board denied leave to file the motion, because the Board would address the issue of adding new testimony evidence in its decision regarding institution.  Also, the Board denied leave to file a motion to stay a related reexamination, because such a motion is premature until a decision on institution is rendered in this case.

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Denying Motion for Leave to File Motion to Strike Reply Evidence IPR2013-00578

Takeaway: When the Board follows its typical practice of waiting until after oral argument to determine if reply evidence was improperly submitted ,a patent owner relies on that evidence at its own peril because it risks basing its arguments on improper evidence that ultimately is not considered.

In its Order, the Board denied Petitioner’s request for permission to file a motion to strike Patent Owner’s reply exhibits.

Petitioner contended that seven exhibits submitted with Patent Owner’s reply included new evidence concerning conception, diligence, and suitability for intended use were part of Patent Owner’s prima facie case of prior invention and should not have been submitted for the first time in a reply. Petitioner also argued that it was deprived of the opportunity to present expert testimony on the evidence and to respond to the new evidence in a brief. Patent Owner argued that it had raised the prior invention arguments earlier and that the new exhibits merely were submitted to respond to specific arguments Petitioner made in its opposition brief.

The Board noted that it can determine for itself whether the objected-to evidence was improperly submitted—and, if so, disregard it— and then declined to deviate from its typical practice of waiting until after oral hearing to determine if any reply evidence was improperly submitted. However, it cautioned Patent Owner that it relies on any newly submitted evidence at its own peril because it risks basing its prior invention argument on evidence that, ultimately, may not be considered because it was improperly submitted.

Neste Oil OYJ v. REG Synthetic Fuels, LLC, IPR2013-00578
Paper 33: Order on Conduct of the Proceeding
Dated: September 25, 2014
Patent 8,231,804
Before: Rama G. Elluru and Christoper L. Crumbley
Written by: Crumbley

Denying Motion to Strike IPR 2014-00153, 154

Takeaway: In general, as long as Petitioner’s Reply is in response to arguments raised in Patent Owner’s Response, then it is within the scope of a Reply in accordance with 37 C.F.R. § 42.23.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to strike portions of Petitioners’ Reply and the accompanying declaration that accompanied the Reply.  The Board’s denial of this request applied to each of IPR2104-00153 and IPR2014-00154. Continue reading

Order on Motions to Seal and for Entry of Protective Order IPR2014-00309

Takeaway: A party may file a motion to seal such that the information at issue will be sealed pending the outcome of the motion; however, only “confidential information” is protected from disclosure.

In its Order, the Board denied Patent Owner’s request for entry of a non-standard Protective Order and, instead, entered the Board’s default Protective Order.  The Board also denied Patent Owner’s request to file a Motion to Strike Patent Owner’s unredacted response/exhibits for lack of service. Continue reading