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

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

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

Granting Request for Rehearing based on Board’s Sua Sponte Identification of Unargued Basis for Earlier Prior Art Date IPR2015-01189

Takeaway: A priority benefit to an earlier filed application requires both that there be continuity to the earlier application and that the salient description is present in each application establishing the continuity.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s Decision Denying Institution of Inter Partes Review.  The Board had denied institution, holding that Petitioner had failed to establish a prior art date for the Kikinis CIP reference.  In granting rehearing, the Board identified an alternative route to establish an earlier prior art date for the Kikinis CIP, and indicated that another Institution Decision addressing the merits of the Petition would be forthcoming. Continue reading

Document Is Prior Art Via Public Dissemination Or By Being Made Sufficiently Available IPR2015-01651

Takeaway: A document can become prior art by way of public dissemination or by being made sufficiently available to the public (e.g., via a search engine).

In its Decision, the Board instituted inter partes review of claims 1-20 of the ’271 patent.

According to the Board, the ’271 patent relates to a bottle cap (i.e., crown cap) that is made with thinner and harder steel compared to conventional crown caps. Petitioner asserted the following challenges to the ’271 patent: (1) claims 1-4, 10, 12-15, and 17-20 as obvious over Frishman and Industrial Heating; (2) claims 11 and 16 as obvious over Frishman, Industrial Heating, and Wagner; (3) claims 1-4 and 10-20 as obvious over Industrial Heating and Wagner; (4) claims 5-9 as obvious over Frishman, Industrial Heating, Mumford, and U.S. Steel; and (5) claims 5-9 as obvious over Industrial Heating, Wagner, Mumford, and U.S. Steel. Petitioner asserted that “average hardness” is hardness plus variations, and that “hardness” refers to Rockwell Hardness. Patent Owner did not dispute these assertions. Continue reading

Institution Granted Where SEC Filing Found to be Printed Publication IPR2015-01853

Takeaway: The ability to search an SEC form based on the technical content contained therein is not a requirement for such a form to qualify as a printed publication where other means exist to allow one to locate the document upon exercising reasonable diligence.

In its Institution Decision, the Board instituted inter partes review of claims 1-3, 5-8, and 10-41 of the ’826 patent. The ’826 patent “relates to methods of using a sustained release oral dosage form of an aminopyridine composition to treat a neurological disorder, such as multiple sclerosis (‘MS’), by maximizing the therapeutic effect, while minimizing adverse side effects.” Continue reading

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

Allegations of Inequitable Conduct Disregarded in Decision Denying Institution IPR2015-01897

Takeaway: Allegations tantamount to inequitable conduct are not proper in a petition for inter partes review and will be disregarded.

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5, 6, 10, 11, 14, and 15 of the ‘494 patent. The ‘494 patent is entitled “Malicious Mobile Code Runtime Monitoring System and Methods” and claimed priority to seven earlier-filed applications. Continue reading

Final Written Decision finding Four-Month Period of Inactivity Sufficient to Defeat Patent Owner’s Claim of Diligence IPR2014-01209

Takeaway: Arguments that disregard relevant parts of a prior art reference without sufficient explanation as to why a person of ordinary skill would do so may be found to be impermissible hindsight reasoning. Continue reading

Final Written Decision finding Asserted Reference to be Enabling IPR2014-01162

Takeaway: A declaration that does not adequately set forth the underlying data on which the opinion is based may potentially be remedied during cross-examination or in a second declaration explaining the basis for the opinion.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-46 are unpatentable. “The ’467 patent is directed to high definition lenticular lenses.” Continue reading

Denying Institution of CBM Asserting Patent Ineligibility and Prior Art Under Section 102(e) CBM2015-00167

Takeaway: A reference that is prior art under only § 102(e) may not be asserted in a CBM patent review.

In its Decision, the Board denied institution of covered business method patent review of claims 1-9 of the ‘792 patent. “The ’792 patent relates to a modified automated teller machine (‘ATM’) or terminal that allows a customer to obtain cash from an account via various processes such as an ATM process or a point-of-sale (‘POS’) process using both debit cards and credit cards.” Continue reading