In its Decision, the Board denied institution of covered business method patent review of seven related cases. Two Petitioners (AAA and Gerber) had previously “settled with Phoenix Licensing LLC (‘Patent Owner’) and have been terminated from each of the proceedings.” The Board determined “that Petitioner [Acxiom] has not demonstrated that it has standing to file these Petitions for covered business method review under § 18(a)(1)(B) of AIA and 37 C.F.R. § 42.302.” Continue reading
Category Archives: Real Parties-in-Interest
Denying Motion for Discovery IPR2015-01264, 1268, 1269, 1319, 1321, 1325
In its Order, the Board denied Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner requested discovery that it believes may lead to evidence showing that Activision Publishing, Inc. is an unnamed real party-in-interest in the proceeding. Patent Owner filed a complaint alleging infringement by Activision over a year prior to the filing of the Petitions. Petitioner stated that Activision is a publisher that publishes videogames, including Destiny, which Petitioner created. Petitioner states that it only has a duty to indemnify Activision if a third party serves a complaint asserting that Destiny infringes a patent, and even then, Petitioner is solely responsible for the costs of the defense and has all control over the defense. Patent Owner wrote a letter to Activision’s counsel stating that it intended to add Destiny as a product-at-issue in the lawsuit, but neither Destiny nor any other product of Petitioner has ever been added to that lawsuit. Continue reading
Institution Granted In Part Because Only Some Of The Grounds Included A Full Analysis IPR2015-00960, 61
In its Decision, the Board granted institution of inter partes review (IPR) of claims 1, 2, 4-7, 9-16, 18-20, and 23 of the ’929 patent. The ’929 patent discloses an imaging system for vehicles that is able to determine if another vehicle is adjacent to, forward of, or rearward of the vehicle equipped with the imaging system. Petitioner asserted the following grounds of unpatentability: (1) claims 1, 2, 4-7, 9-15, 16, 18-20, and 23 as anticipated by Pawlicki; (2) claims 1, 2, 4-7, 9-15, 16, 18-20, and 23 as obvious over Pawlicki; (3) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Tzomakas; (4) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Broggi II; (5) claims 1, 2, 4-7, and 9-15 as obvious over Pawlicki and Broggi I; (6) claims 1, 16, and 18 as anticipated by Yamamura; (7) claims 1, 16, and 18 as obvious over Yamamura; (8) claims 16 and 18 as anticipated by Kenue; (9) claims 16 and 18 as obvious over Kenue; (10) claim 1 as anticipated by Graefe; (11) claim 1 as obvious over Graefe; (12) claim 1 as anticipated by Thorpe; (13) claim 1 as obvious over Thorpe; (14) claim 4 as obvious over Yamamura and Sun; and (15) claims 3, 8, 17, 21, and 22 as obvious over Pawlicki and Jeon. Continue reading
Granting Institution of Petition By Coalition For Affordable Drugs IPR2015-01093
In its Decision, the Board granted institution of inter partes review (IPR) of claims 1-27, 31-40, and 44-45 of the ’886 patent. The ’886 patent discloses L-histidine stabilized drug formulations of glucagon-like peptide-2 (“GLP-2”) and GLP-2 analogs. Petitioner challenged claims 1-45 of the ’886 patent on the following grounds: (1) claims 1-27, 33-35, 38, and 45 as obvious over Drucker ’379, Kornfelt, Osterberg; (2) claims 31-32 and 44 as obvious over Drucker ’379, Kornfelt, Osterberg, and Munroe; (3) claims 28-30 and 39-43 as obvious over Drucker ’379, Kornfelt, Osterberg, and Holthuis; and (4) claims 36-37 as obvious over Drucker ’547, Kornfelt, Osterberg, Holthuis, and Munroe. The Board did not construe any specific terms of the claims. Continue reading
Denying Additional Discovery where Party Had Sought Potentianal Indemnification from Third Parties IPR2015-01322
In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery seeking production of documents and “authorization to take a deposition of an IBM designee.” In particular, Patent Owner sought discovery to determine whether Petitioner was in privity with J.P. Morgan Chase & Co. (“JPMC”) with respect to Patent Owner’s patent infringement litigation against JPMC and two subsidiaries (“New York litigation”). Because JPMC had been served with a complaint more than one year before the Petition was filed, Patent Owner argued that the Petition was time-barred by virtue of Petitioner’s privity with JPMC.
Whether a party is a privy “depends on whether the relationship between a party and its alleged privy is ‘sufficiently close such that both should be bound by the trial outcome and related estoppels.’” The Board considers “whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.”
The party seeking additional discovery “must show that such additional discovery is in the interests of justice.” According to the first Garmin factor, the party “should already be in possession of evidence tending to show beyond speculation that in fact something useful will be uncovered.”
Patent Owner argued that publicly available information established a “high probability” that evidence that Petitioner had “the contractual right to control JPMC’s defense in the New York litigation,” citing the “IBM Client Relationship Agreement” and “IBM Customer Agreement” available on Petitioner’s website. According to Patent Owner, the documents established that Petitioner has the right “if not the duty” to control the defense of infringement claims made against its customers, triggered when the customer notifies Petitioner in writing. Patent Owner also cited evidence of statements made by JPMC that it was coordinating with Petitioner to take over the defense of the New York litigation.
The Board found that Patent Owner did not provide persuasive evidence of an agreement between JPMC and Petitioner. Even if such an agreement existed, the Board was not persuaded that it contained an indemnification clause similar to that found on Petitioner’s website, and even if it did, the Board was not persuaded that Petitioner had actual control or the opportunity to control the New York litigation in light of the additional conditions that must be met before Petitioner could assume control. Patent Owner did not offer evidence that any of the additional conditions had been met with respect to JPMC and the New York litigation. With respect to the statements made by JPMC in the New York litigation, the Board found that the evidence only established that JPMC was coordinating with “potential third parties––about two dozen companies, including [Petitioner].” Thus, the Board found that Patent Owner did not set forth “any more than a possibility and allegation that something useful will be found.”
With respect to the discovery requests, the Board found some of the document requests to be overly burdensome that would require significant expenditures by Petitioner.
Therefore, the Board denied Patent Owner’s Motion for Additional Discovery.
International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2015-01322 and IPR2015-001323
Paper 11: Decision Denying Patent Owner’s Motion for Additional Discovery
Dated: September 24, 2015
Patent: 6,314,409 B2
Before: Kristen L. Droesch, Barbara A. Parvis, and Matthew R. Clements
Written by: Droesch
Motion for Additional Discovery Into Real Parties-in-Interest Authorized IPR2015-01750
In its Decision following a conference call with the parties, the Board granted Patent Owner’s request for authorization to file a motion for additional discovery concerning whether Salesforce.com, Inc. is a real party-in-interest in the proceedings. The panel was “persuaded that further briefing would assist the Board in deciding whether to provide Patent Owner with additional discovery in this case.” Continue reading
Federal Circuit Appeal in IPR2013-00080, 00081: Achates Reference Publishing v. Apple
PTAB Determination regarding Time-Bar under 315(b) is Not Appealable to the Federal Circuit
In its Opinion, the United States Court of Appeals for the Federal Circuit dismissed the appeals of Petitioner, Achates, appealing the Board’s Final Written Decisions in IPR2013-00080 and IPR2013-00081 finding claims 1-4 of the ’889 patent and claims 1-12 and 17-19 of the ’403 patent unpatentable. Achates appealed the Board’s decisions on the basis that the petitions were time-barred under 35 U.S.C. § 315(b), and the Board therefore acted outside of its statutory authority. Achates also appealed the Board’s denial of its motion for discovery.
Achates argued at the Board that Apple’s Petition is time-barred because Apple’s co-defendants in a patent infringement suit brought by Achates were actually real parties in interest with respect to the Petition or were in privity with Apple. The co-defendants had been served with the complaint for infringement more than one year before the Petition was filed and were therefore time-barred, but Apple was served with its complaint less than one year before the Petition’s filing. Achates relied upon a blank indemnification agreement between Apple and co-defendant QuickOffice as allegedly establishing privity or real party in interest, and moved for additional discovery into real party in interest on the same basis.
The Board found that the co-defendants were not real parties in interest or in privity with Apple and denied Achates’s motion for discovery. The Petitions were instituted, and the challenged claims subsequently found unpatentable. On appeal, Achates only challenged the Board’s denial of its motion for discovery and its conclusion that the Petitions were not time-barred.
The Court first reviewed the relevant statutory provisions regarding appealing decisions of the Board. According to 35 U.S.C. §§ 314(d) and 324(e), respectively, “[t]he determination by the Director whether to institute [IPR or CBMR] under th[ese] section[s] shall be final and nonappealable.” In contrast, pursuant to 35 U.S.C. §§ 319 (IPR) and 329 (CBMR), “part[ies] dissatisfied with the final written decision of the Patent Trial and Appeal Board under section[s] [318(a) or 328(a)] may appeal the decision pursuant to sections 141 through 144.” Moreover, the Federal Circuit noted that 35 U.S.C. § 141(c) states
A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit.
The Court also discussed other Federal Circuit opinions holding that the Court lacked jurisdiction to hear appeals of institution decisions. In particular, the Court cited In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (Fed. Cir. 2015), in which the Court held that the “reviewability prohibition” of Section 314(d) is not limited to interlocutory appeals and applies where the appeal of the institution decision is taken after the Board’s final written decision.
The Court also discussed Versata Dev. Grp., Inc. v. SAP America, Inc. (“Versata II”), 793 F.3d 1306 (Fed. Cir. 2015). In Versata II, the patent owner Versata appealed the Board’s determination that its patent qualified as a covered business method patent for CBM review after the Board’s final written decision. The Court held that while institution decisions are not appealable, the determination of whether a patent qualifies as a covered business method patent “was necessarily implicated in the final merits determination and was appropriate for review because of the fundamental limitation of the Board’s ‘ultimate invalidation authority’ in a CBMR to those patents that meet the CBM definition.”
Achates argued that, in the present case, a time-barred petition “goes to the Board’s ultimate authority to invalidate the patents, and therefore, under Versata II, is reviewable under § 319.” The Court disagreed, finding that Versata II was limited to its unique circumstances. In particular, the Court found that Section 315(b) “does not impact the Board’s authority to invalidate a patent claim—it only bars particular petitioners from challenging the claim.” In addition, the Court noted that the time limitation does not apply to joinder under subsection (c). Therefore, “the timeliness issue here could have been avoided if Apple’s petition had been filed a year earlier or if a petition identical to Apple’s were filed by another party,” in contrast to the situation in Versata II, where “no proper pleading [] could be filed to bring it within the [Board’s] § 18 authority.”
In addition, the Court distinguished the time-bar from Versata II because qualification as a covered business method patent was “the ‘defining characteristic’ of the Board’s ‘authority to invalidate’ a patent in the specialized CBMR process.” However, the time-bar is not such a defining characteristic, but is rather merely a rule for orderly progress of litigation.
Achates also argued that the Board’s reaffirmation of the time-bar determination in its final written decision made the determination appealable. The Court disagreed, finding that the overlap is not determinative (citing Versata II) and that the reconsideration of the time-bar can still be characterized as part of the institution decision.
Achates finally argued as a matter of statutory interpretation that the prohibition in Section 314(d) applied only to that section. However, the Board disagreed with Achates’s interpretation and found it to be contradicted by precedent. In particular, the “words ‘under this section’ in § 314 modify the word ‘institute’ and proscribe review of the institution determination for whatever reason.”
Thus, the Court held that Section 314(d) prohibits review of the Board’s determination regarding the time-bar of Section 315(b), even where the Board reconsiders its determination as part of the final written decision. The Court further held that “the Board’s institution decision does not violate a clear statutory mandate,” and therefore, the exception for ultra vires agency action does not apply.
Achates Reference Publishing, Inc. v. Apple Inc., No. 2014-1767, No. 2014-1788
Dated: September 30, 2015
Appeal From: IPR2013-00080; IPR2013-00081
Before: Judges Prost, Lourie, and Linn
Written by: Linn
Motion for Additional Discovery Granted-in-Part, Denied-in-Part PGR2015-00003, PGR2015-00005
In its Decision, the board granted-in-part Patent Owner’s motion for additional discovery. Patent Owner sought additional discovery from Petitioner regarding: (a) third parties that may fund or have direction or control over the Proceedings; (b) Petitioner’s knowledge regarding certain secondary considerations of non-obviousness; and (c) the relationship between Petitioner and Petitioner’s proposed expert, Dr. Matt Spangler. Patent Owner submitted 14 proposed Requests for Production and 7 proposed Interrogatories with its Motion for Additional Discovery.
Granting Institution of Inter Partes Review Over Objection that All Real Parties-in-Interest Were Not Identified IPR2015-00864
In its Decision, the Board granted institution of the challenged claims (1-27) of the ’703 Patent. The ’703 Patent “relates to methods for preventing or treating diseases caused by thrombus or embolus by administering an effective amount of 2-acetoxy-5-(α-cyclopropylcarbonyl-2-fluorobenzyl)-4,5,6,7-tetrahydrothieno[3,2-c]pyridine, or a pharmaceutically acceptable salt thereof, and aspirin to warm-blooded animals, particularly humans.” Continue reading
Denying Motions to Vacate because Un-named Members of Corporate Group were Separate Entities IPR2015-00808, 814, 815, 818, 819, 823, 824
In its Order, the Board denied Patent Owner’s Motion to Vacate because of an alleged failure of Petitioner to name two corporate entities as real parties in interest (RPI). Patent Owner filed similar Motions to Vacate in seven inter partes review proceedings, alleging that because at least two entities were not identified as an RPI, the Petitions should not be entitled to a filing date, 35 U.S.C. § 312(a)(2), and were therefore time-barred under 35 U.S.C. § 315(b). Continue reading