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
In its Decision, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery directed to evidence regarding whether certain additional parties should be listed as real parties-in-interest.
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
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.
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
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.
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.”
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.
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
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