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

A Showing That Third Party Is An Executor Or Board Member Is Insufficient For Real-Parties-In-Interest IPR2015-01769

Takeaway: Merely being an alleged executor or board member of Petitioner does not establish sufficiently that the individuals identified, in their individual capacities, exercise control or have an opportunity to exercise control of the proceeding, as opposed to in their capacities as executives or board members of Petitioner.

In its Decision, the Board determined that Petitioner had demonstrated that there is a reasonable likelihood that it would prevail with respect to at least one of claims 1-7 of the ’433 patent. Continue reading

Request for Rehearing of Final Written Decision Denied IPR2014-00688

Takeaway: Evidence of failure to include a real party-in-interest that is presented after entry of a final written decision will not be considered because it is late.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision regarding claims 1 and 15 of the ’607 Patent. The Board noted that a Final Written Decision is reviewed for abuse of discretion, and the party requesting rehearing bears the burden of showing that the Final Written Decision should be modified.  The Request must identify all matters the party believes were misapprehended or overlooked.

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Instituting CBM Review for Patent with Claim Encompassing Transitory, Propagating Signal CBM2015-00182

Takeaway: A claim that encompasses a transitory, propagating signal is not patent eligible, and adding the phrase “having program code recorded thereon” to limit computer readable medium does not necessarily limit the medium to non-transitory media.

In its Decision, the Board instituted covered business method (CBM) review, finding that Petitioner demonstrated that it is more likely than not that the challenged claims of the ’132 patent are unpatentable. A request by Patent Owner to expand the panel for the decision to institute was also denied. Continue reading

Motion to Terminate Denied IPR2015-00739

Takeaway: The statutory requirements under 35 U.S.C. § 312(a) for consideration of a petition are not jurisdictional. Therefore, the Board can allow a petitioner to rectify a lapse in compliance without terminating the proceedings.

In its Decision, the Board denied Patent Owner’s Motion to Terminate the Proceeding based upon lack of jurisdiction of the Board to institute inter partes review.

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Request For Rehearing Granted-In-Part IPR2015-01047

Takeaway: In a request for rehearing, the movant must focus on areas that were misapprehended or overlooked by the Board.

In its Decision, the Board granted-in-part Patent Owner’s Request for Rehearing on the Board’s Decision to deny Patent Owner’s Motion for Additional Discovery. In that Decision, the Board found that “Patent Owner has not met its burden in showing additional discovery is in the interests of justice as required under 37 C.F.R. § 42.51(b)(2).” Patent Owner argued in its Request for Rehearing that “[s]ince the Motion was directed to improperly omitted [real parties-in-interest] in particular, the evidence presented in the Motion only needed to show beyond speculation that something useful would be uncovered as to the [real party-in-interest] issues. The Motion certainly met this standard.”

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Covered Business Method Patent Review Instituted CBM2015-00161

Takeaway: The fact that a petitioner copied the arguments and exhibits from a prior petition of a non-party does not prove in itself that the non-party is a real party-in-interest to the current proceeding.

In its Decision, the Board granted institution of covered business method review on all challenged claims of the ’304 Patent. The ’304 Patent discloses a display and a method of using the display to trade a commodity.

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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 where Petition was Found to Raise Previously-Presented Arguments IPR2015-01511

Takeaway: Arguments and citation to prior art in a petition that attempt to buttress the same arguments previously considered and found insufficient by the Board will likely be found to be the same or substantially the same in the Board’s exercise of discretion to deny institution under Section 325(d). Continue reading