Petitioner Required to Map Prior Art Claims to Provisional Application IPR2015-01315

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Takeaway: When, between the filing of a Petition and the Board’s decision on institution, it appears that there has been a change in the law that would require additional information to be included in a Petition, the Board may permit the Petitioner to submit a short supplemental paper to provide such information and, if the Patent Owner has already filed its Preliminary Response, the Board may permit the Patent Owner to submit a response to Petitioner’s additional paper.

In its Decision, the Board authorized Petitioner to file a non-argumentative claim chart showing where written description support for the claims of a cited prior art reference could be found in a related provisional patent application and authorized Patent Owner to file a response to Petitioner’s claim chart.

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Institution Denied Where Petitioner Impermissibly Relied Upon the Teachings of the Challenged Patent IPR2015-00802

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Takeaway: Motivation to combine in the face of an express teaching away must be found in the prior art itself; reliance on the teachings of the challenged patent to find a motivation to combine is impermissible hindsight.

In its Decision, the Board denied institution of inter partes review of claims 1-4 of the ‘285 patent because Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. The ‘285 patent “is directed to drug dosage forms that have a coordinated release of an agent that raises the pH of a patient’s gastrointestinal tract to a safe level, followed by a non-steroidal anti-inflammatory drug (‘NSAID’), to reduce unwanted gastrointestinal side effects.” Continue reading

Benefit from Earlier Filing Date Results in Denial of Institution IPR2015-00918

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Takeaway: Claims in a continuation-in-part application may benefit from an earlier-filed application even without in haec verba support for the challenged claim language.

In its Decision, the Board did not institute inter partes review of claims 1-20 of the ‘563 patent because the allegedly anticipating KenKnight ‘967 reference was not prior art. The ‘563 patent “relates to an implantable system for the antitachycardia pacing of the heart of a patient in need of such treatment.” As an initial matter, the Board found that “none of the terms in the challenged claims requires express construction at this time.” Continue reading

Decision Denying Request for Rehearing IPR2014-01457

Microsoft Corporation v. Biscotti Inc.

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Takeaway: Showing that a third party received a document and submitted it in an Information Disclosure Statement for an unrelated application was not sufficient to show that the document was publicly available within the definition of printed publication.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying Petitioner’s challenge of claims 13-16, 29, 31-34, 36, and 82-86 as obvious over Kenoyer and the HDMI Specification. Upon a request for rehearing, the decision on a petition is reviewed for an abuse of discretion. The party requesting rehearing “must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously.” Continue reading

Granting Request for Rehearing Based Upon Showing That Secondary Ground Would Defeat Swear-Behind Defense IPR2014-01448

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Takeaway: The Board granted rehearing of a decision declining to institute an obviousness ground because although it is arguably weaker substantively, it would avoid a swear-behind defense on which the arguably stronger ground was subjected.

In its Decision, the Board granted the rehearing in part, so as to institute an inter partes review of claims 1 and 7 of the ’279 Patent based on obviousness over He and Korodi. However, the Board continued to decline to institute the other obviousness ground asserted in the Petition. In its Decision on Institution, the Board had instituted review of claims 1 and 7 under 35 U.S.C. § 103 in view of Gustafsson and He; declined institution of an anticipation ground based on Naghi; and declined institution of an obviousness ground over He and Korodi or Currie (“Assertion 2”), because Petitioner did not explain adequately the relative strengths and weaknesses of its asserted grounds. Continue reading

Decision Denying Institution IPR2015-00413

Apple Inc. v. E-Watch, Inc.

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Takeaway: The Board is not bound by a decision by an Examiner on whether a declaration presented in prosecution sufficiently established that an invention predated a prior art reference.

In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims, claims 1-3, 5-7, 12, and 14. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” Continue reading

Final Written Decision IPR2014-00073

Finding All Instituted Claims Unpatentable

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Takeaway: Patent Owner was able to persuade the Board that features not specifically described in a priority document were necessarily comprehended in the description based, at least partly, on expert testimony that the described device in the priority document could not work without the alleged missing feature.

In its Final Written Decision, the Board held that Petitioner demonstrated by a preponderance of the evidence that all of the instituted claims, claims 21, 22, 24, 30, and 33-37, of the ’356 patent are unpatentable based on some, but not all, of the grounds upon which trial was instituted. The Petition also challenged claims 25 and 26, but no grounds on those claims were instituted. The ’356 patent generally relates to “methods and apparatuses for accessing a surgical target site, such as the lumbar spine, using minimally invasive techniques.” Continue reading

Decision Denying Institution IPR2015-00411

Apple Inc. v. E-Watch, Inc.

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Takeaway: The Board has no jurisdiction to review a decision by the United States Patent and Trademark Office to revive a patent application, even where the decision affects whether there was co-pendency between a parent and child application for purposes of determining whether intervening art qualifies as prior art against the child.

In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” Continue reading

Denying Institution IPR2015-00153

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Takeaway: Petitioner has the burden of demonstrating that a prior art patent relying on the priority date of an earlier provisional application qualifies as prior art under 35 U.S.C. § 102(e).

In its Decision on Institution, the Board denied the Petition challenging claims 1-23 of the ’021 patent. According to the Board, Petitioner had not demonstrated a reasonable likelihood of prevailing on its challenge with respect to these claims. Continue reading

Decision Denying Institution IPR2015-00060

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Takeaway: Evidence that a paper was presented at a conference attended by people of ordinary skill in the art may be sufficient to establish that the paper is available as prior art.

In its Decision on Institution, the Board found that Petitioner had not established a reasonable likelihood of prevailing on any of the challenged claims, claims 1, 8, 10, 18, 19, and 22, of the ’032 Patent. The ’032 Patent describes an encoding/decoding scheme. In particular, the ’032 Patent describes the serial concatenation of interleaved convolutional codes forming turbo-like codes. Continue reading