Denying Institution of Inter Partes Review IPR2014-01095

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Takeaway: It is not sufficient to merely demonstrate that each of the components is known in the prior art; a Petitioner must also explain how a person of ordinary skill in the art would combine those components and why such a person would be motivated to do so.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 1-4 of the ’816 Patent.  The ’816 patent relates to a light emitting panel assembly having a light emitting panel member with an input edge that receives light from the light source, and end edge and side edge reflectors. Continue reading

Order Regarding Institution of Inter Partes Review IPR2015-00065

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Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.

The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response. Continue reading

Order on Conduct of the Proceeding IPR2014-01201

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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 to Submit New Testimonial Evidence IPR2014-01365

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Takeaway: Testimony evidence is not permitted to be submitted with the patent owner preliminary response, but the Board does have discretion to permit such evidence, if it is in the interests of justice.

In its Order, the Board denied Patent Owner’s request to file the deposition testimony of an expert, taken in a related IPR proceeding, with its Preliminary Response. During a conference call, Patent Owner argued that the transcript of the deposition of Petitioner’s expert in a related IPR proceeding included testimony relevant to limitations in claims 72-82 of the ’216 patent.  Further, Patent Owner argued that contentions made by the expert in the petition for this proceeding were refuted by statements made by that expert during his deposition in the other proceeding.

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Granting Sua Sponte Order to Expedite Preliminary Response IPR2014-01144

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Takeaway: The Board has discretion to expedite due dates, especially in cases where the expedited date is not unduly burdensome and will assist in creating a just, speedy, and efficient proceeding.

In its Order, the Board sua sponte ordered that the due date for Patent Owner’s preliminary response be expedited. In June 2014, an inter partes review was instituted in Apple Inc., Google Inc., and Motorola Mobility LLC v. Arendi S.A.R.L., Case IPR2014-00207.  Within a month, Petitioner filed its Petition along with a motion for joinder with IPR2014-00207.  Patent Owner filed an opposition to the motion for joinder and Petitioner filed a reply to the opposition. Continue reading

Denying Authorization to File a Motion to Disqualify, Motion to Present Live Demo, and Motion to Expunge Exhibit CBM2014-00131; CBM2014-00133; CBM2014-00135; CBM2014-00136; CBM2014-00137

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Takeaway: A live demo may not be authorized to accompany a preliminary response because it is akin to new testimony.

In its Order, the Board addressed three separate issues. First, the Board declined to authorize Petitioner to file a motion to disqualify Patent Owner’s counsel or a motion for additional discovery related to the motion to disqualify. Second, the Board declined to authorize Patent Owner to present a live demo in support of its Preliminary Response. Third, the Board declined to authorize Petitioner to file a motion to expunge Exhibit 1006. Continue reading

Denying Request for Rehearing of Decision on Institution CBM2014-00005

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Takeaway: Patent Owner should include all arguments in the preliminary response, including those which it believes Petitioner has conceded, or it may not be able to raise those arguments in a request for rehearing.

In its Decision, the Board denied Patent Owner’s request for rehearing of the decision to institute covered business method patent review of claims 1-6 of the ’205 Patent. The Board stated that the moving party has the burden of showing the decision should be modified, and the moving party must identify all matters it believes the Board misapprehended or overlooked and the place where each matter was previously addressed in the papers. Continue reading

Granting Leave to File Reply to Patent Owner Preliminary Response IPR2014-00360

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Takeaway: Additional briefing may be allowed to address alleged factual inaccuracies in a patent owner’s preliminary response.

In its Order, the Board granted Petitioner’s request to file a reply to Patent Owner’s Preliminary Response to address an alleged time bar under 35 U.S.C. § 315(b).

Patent Owner, in its Preliminary Response, asserted that Petitioner was barred under § 315(b) because it was served with a complaint alleging infringement of the ’216 patent more than one year before the petition was filed.  In particular, Patent Owner alleged that Petitioner was “served” with a relevant complaint on January 9, 2013 “when Patent Owner served a motion for leave to file a second amended complaint (Ex. 2004) that included, as an exhibit, a copy of the second amended complaint, which Patent Owner filed with the district court on January 17, 2013.” Continue reading

Denying Leave to File Motion to Submit New Evidence IPR2014-00384

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Takeaway: While new testimonial evidence is not permitted with the filing of a patent owner preliminary response, the Board may authorize the filing of additional non-new testimonial evidence with the preliminary response.

In its Order, the Board denied authorization for the filing of a declaration by Patent Owner with its Preliminary Response but authorized the filing of additional pages of an alleged prior art reference. Continue reading