Final Written Decision Concluding Nexus Not Established IPR2014-01102

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Takeaway: To prove nexus between an allegedly commercially successful product and a claimed invention, a patent owner relying upon infringement claim charts in a related litigation should provide explanation as to the context of the litigation, such as whether infringement was established or whether the accused infringer agreed to the charge of infringement. Continue reading

Motion for Additional Discovery Authorized IPR2015-01866-68

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Takeaway: Providing specific information gleaned from a related district court litigation that suggests that additional discovery may exist to show that there are other real parties-in-interest will increase a patent owner’s chances of getting authorization to file a motion for additional discovery.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery. Patent Owner requested authorization to file a motion for additional discovery limited to the issue of whether LG Display or LG Electronics and Petitioner are privies. Patent Owner stated that it learned recently in the related district court litigation, to which Petitioner is not a party, of evidence of a supply agreement between Petitioner and LG Display or LG Electronics that may contain indemnification obligations. Patent Owner also referenced admissions of payment made in conjunction with discovery responses that may substantiate these contentions.

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Institution of Inter Partes Review IPR2015-01117

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Takeaway: The crux of a determination that a party is a real party-in-interest is whether that party has control over the proceeding.

In its Decision, the Board found a reasonable likelihood that Petitioner would prevail on its challenges to claims 1-12 of the ’012 Patent, and instituted inter partes review. The ’012 Patent is directed to “treatment of patients with nitrogen retention states, in particular urea cycle disorders (UCDs) . . . [by] administer[ing] compounds that assist in elimination of waste nitrogen from the body.”

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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

Denying Institution for Failing to Name All Real Parties-in-Interest IPR2015-01420

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Takeaway: The Board may deny institution of a petition that does not name all the real parties-in-interest where affording a new filing date would be futile for being past the one-year bar date.

In its Decision, the Board denied institution of inter partes review for failing to specify all real parties-in-interest in the Petition. In its Preliminary Response, Patent Owner “alleged that Yankon Industries, Inc. (‘Yankon-US’), as well as Lowe’s Companies, Inc. and Lowe’s Home Centers, LLC (collectively, ‘Lowe’s’) should have been identified as real parties-in-interest in the Petition, pursuant to 35 U.S.C. § 312(a)(2).” The Board sua sponte authorized Yankon- China to submit briefing and evidence addressing the real party-in-interest issues. Upon consideration of the “totality of the circumstances,” the Board was “persuaded that Yankon-China should have identified Yankon-US as a real party-in-interest in the Petition.” Continue reading

Additional Discovery into RPI Granted Where Evidence Showed Petitioner May Act as Agent or Proxy for Third Parties IPR2015-01750,01752

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Takeaway: The Board may grant permission for focused discovery to ascertain whether a certain third party is a real party-in-interest that should have been named in the petition, in particular, where the petitioner’s business model implies that it may act as an agent or proxy for third parties.

In its Decision, the Board granted Patent Owner’s Motion for Additional Discovery. Patent Owner sought additional discovery from Petitioner to determine whether a third party should have been identified as a real party-in-interest in the proceedings. Petitioner, however, argued that Patent Owner failed to meet the first Garmin factor, and thus discovery should be denied. Continue reading