Institution Granted Where Claims Not Entitled to Earlier Priority IPR2016-00061

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Takeaway: The written description requirement is not satisfied by “subject matter which is not disclosed but would be obvious over what is expressly disclosed.”

In its Decision, the Board granted institution as to claims 1, 2, 4, 6, 7, 15, and 16 of the ’593 Patent, but declined to institute review of claims 3 and 8 of the ’593 Patent. The ’593 Patent discloses a vehicle stereo control interface system for use with factory installed local stereo controls and an aftermarket in-dash stereo. Continue reading

Patent Not Entitled to Filing Date of Provisional Because Claims Not Supported By The Provisional IPR2015-01835

Takeaway: A reasonable expectation of success is not absolute predictability of success.

In its Decision, the Board determined that Petitioner had established a reasonable likelihood of prevailing in showing the unpatentability with respect to at least one IPR of claims 1-10 of the ’135 patent. 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

Burden to Establish Earlier Priority Date on Patent Owner in Decision Instituting Post-Grant Review PGR2015-00022

Takeaway: There is no initial burden on a petitioner to rebut a priority date, but including such an argument in a petition may be advisable because there is generally no opportunity to submit additional evidence or argument at the institution stage after the patent owner’s preliminary response.

In its Decision, the Board instituted Post-Grant Review of the ‘292 patent. The ‘292 patent is titled “Multi-Spectrum Lighting Device with Plurality of Switches” and “generally describes a multi-spectrum emitting device” that is “capable of emitting a first spectrum and a second spectrum and includes switching elements configured to change the emitted light from the first spectrum to the second spectrum.” Continue reading

Institution Denied Where Patent Entitled to Earlier Priority Date IPR2015-01778

Takeaway: The Board will consider a petitioner’s argument that the patent-at-issue is not entitled to an earlier priority date because the challenged claims lack written descriptive support in the parent applications, and will not dismiss it per se as an attempt to circumvent the statute, which only allows anticipation and obviousness arguments in inter partes reviews.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims of the ’506 Patent. The ’506 Patent is directed to the treatment of “all known types of acne,” broadly defined as “a disorder of the skin characterized by papules, pustules, cysts, nodules, comedones, and other blemishes or skin lesions.”

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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

Miscues in Service of the Petition Found Harmless in Granted Institution IPR2015-01466

Takeaway: A petitioner’s miscues in serving the petition may be deemed harmless by the Board where the patent owner could still timely file a response to the petition and suffers no prejudice.

In its Decision, the Board instituted inter partes review of the ‘077 patent as to claims 22, 27, 29, 31, 32, 39, and 40. “The ’077 patent discusses a control, monitoring, and/or security apparatus and method for vehicles or premises” that “allows an owner, occupant, or other authorized individual to control or to perform various monitoring and security tasks in regards to a premises from a remote location and at any time.” Continue reading

Institution of Post-Grant Review of a Patent Issuing from a Transition Application PGR2015-00017

Takeaway: The inquiry into whether a patent issued from a transition application is subject to the AIA first inventor to file statutory provisions and, thus, available for post-grant review turns on whether the patent contains a claim that has an effective filing date on or after March 16, 2013.

In its Institution Decision, the Board instituted Post-Grant Review of the ‘395 patent. The ‘395 patent discloses “a method and apparatus to identify at least one component from a plurality of components in a fluid mixture,” including “a detector apparatus which detects and identifies selected components” and “a laser which emits a laser beam which damages or kills selected components of the plurality of components.” The Board found that claims 1-14 of the ‘395 patent were more likely than not unpatentable. Continue reading

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

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

Final Written Decision Finding Claims Unpatentable and Not Entitled to Priority Date of Parent Application IPR2014-00414

Takeaway: A petition is allowed to assert that subject matter of the patent-at-issue was not adequately disclosed in a prior application in order to afford it an earlier priority date without running afoul of the rule that a petition cannot challenge whether a claim is unpatentable for failure to comply with the written description requirement.

In its Final Written Decision, the Board found that all of the challenged claims (1-19) of the ’894 Patent are unpatentable. The ’894 Patent relates to a service network that facilitates real-time two-way transactions as opposed to deferred transactions, e.g. e-mail.
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