Final Written Decision Upholding Challenged Claims IPR2014-01093

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Takeaway: In order to preserve an argument that the patent is not entitled to an earlier effective filing date, a petitioner must make that argument in its petition so that patent owner is on notice that it has to provide evidence to show that the patent is entitled to an earlier filing date.

In its Final Written Decision, the Board concluded that Petitioner had not demonstrated by a preponderance of the evidence that the challenged claims (1-22) of the ’794 are unpatentable. The ’794 Patent provides “a number of methods directed to the multiplexing amplification and/or genotyping reactions of target sequences to create amplicons that can subsequently be detected on an array.” The earliest possible effective filing date of the ’794 Patent is September 2000.

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Denying Request for Rehearing Regarding Public Availability of Prior Art IPR2015-01272

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Takeaway: Petitioner must provide at least a threshold showing that a non-patent reference was publicly available during the prior art time period for that reference to qualify as prior art for the purpose of determining institution.

In its Decision, the Board denied Petitioner’s Request for Rehearing. Petitioner requested rehearing on the following two grounds: “(a) Petitioner has not been afforded an opportunity to respond under the rules, and/or (b) the determination that the documents did not qualify as prior art printed publications was clear error, and therefore it was an abuse of discretion to deny institution of the inter partes review on that basis.” Continue reading

Final Written Decision Concluding Unpatentability in view of Previously-Cited Reference IPR2014-01084

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Takeaway: Whether a prior art reference was previously taken into account by the Patent Office may be a relevant consideration for the Board in an institution decision under 35 U.S.C. § 325(d), but may not be a relevant consideration when determining whether a petitioner has established unpatentability by a preponderance of the evidence. Continue reading

Final Written Decision Holding that CIP Not Presumed to be Entitled to Earlier Filing Date IPR2014-00824

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Takeaway: A continuation-in-part application is not presumed to be entitled to the filing date of an earlier filed application, and the burden of production falls on the party asserting that an application is entitled to an earlier filing date. Continue reading

Decision Instituting Inter Partes Review of All Challenged Claims IPR2015-01319

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Takeaway: Merely having an agreement that allows a non-party to deny approval of mergers of the petitioner, to have an observer at board of director meetings of the petitioner, and to require advance payment for overhead related to contractual software development is not sufficient to demonstrate that the non-party is a real party in interest in an inter partes review proceeding.

In its Decision, the Board granted institution of inter partes review for all of the challenged claims, claims 1-8, 10, 12, and 14-16 of the ’501 patent, because the Board determined there is a reasonable likelihood that Petitioner would prevail in showing that those claims are unpatentable. The ’501 patent generally relates to a “client-server architecture” for a “three-dimensional graphical, multi-user, interactive virtual world system.” Petitioner asserted the following grounds of unpatentability: claims 1-6, 12, 14, and 15 as obvious over Funkhouser and Sitrick; claims 7 and 16 as obvious over Funkhouser, Sitrick, and Wexelblat; claims 8 and 10 as obvious over Funkhouser, Sitrick, and Funkhouser ’93; claims 1-6, 12, 14, and 15 as anticipated by Durward; claims 7 and 16 as obvious over Durward and Wexelblat; and claims 8 and 10 as obvious over Durward and Schneider. Although Petitioner proffered claim terms for construction, the Board determined that no express construction was required to resolve the issues currently presented by the patentability challenges. Continue reading

Decision Denying Institution IPR2015-01189

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Takeaway: If an application is a continuation of an abandoned application, but is not filed until after the abandoned application went abandoned and there is no incorporation by reference of the abandoned application into the continuation, then the continuation is not entitled to the abandoned application’s priority date.

In its Decision, the Board found that there was not a reasonable likelihood that Petitioner would prevail with respect to any of the challenged claims (1-28) of the ’013 Patent.  Therefore, the Board denied institution of inter partes review.  The ’013 Patent describes chipset (platform)-independent methods for compressing and decompressing system ROM code of a computer. Continue reading

Final Written Decision Finding Evidence of “Printed Publication” Insufficient IPR2014-00690

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Takeaway: A declaration used as evidence of a document being a “printed publication” should be precise and be accompanied by corroborating evidence of public accessibility, and not bare statements by the declarant.

In its Final Written Decision, the Board denied the parties Renewed Joint Motion to Terminate Proceedings and found that Petitioner had not shown by a preponderance of the evidence that the instituted claims 4-6, 8-20, or 23-29 are unpatentable. The ’275 patent “discloses a single wire serial interface for managing functions such as power level and on and off switching for power integrated circuits and other devices.” Continue reading

Final Written Decision Finding Claims Unpatentable and Not Adopting Patent Owner’s Proposed Construction IPR2014-00724

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Takeaway: Optional claim elements do not narrow the claim because they can always be omitted.

In its Final Written Decision, the Board found that Petitioner has shown by a preponderance of the evidence that challenged claims 18–31 of the ‘574 patent are unpatentable. The ‘574 patent “relates to public key encryption (PKE), which is used for securing and authenticating transmissions over unsecure networks.” Continue reading