Institution of Inter Partes Review Denied IPR2015-01932

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Takeaway: Simply stating that art is analogous and in the same field of endeavor is not enough to establish that it would have been obvious to combine the features of the art.

In its Decision, the Board denied institution of inter partes review of any of the challenged claims (1, 3-4, 6-10, 12-15, 17-18, and 20-22) of the ’872 Patent.  The ’872 Patent relates generally to a method for selecting and allocating a seat or group of seats to a ticketed event, such as a sporting or concert event.

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Granting Institution Despite Request for Consideration of Previously-Submitted Prior Art IPR2015-01557

Takeaway: The Board may exercise its discretion to deny asserted grounds of unpatentability for reasons of administrative necessity and to ensure timely completion of an instituted proceeding.

In its Decision, the Board determined Petitioner had established a reasonable likelihood of establishing that claims 10 and 14 of the ’188 patent are unpatentable. The ’188 patent “is directed to a memory card that includes both a device connector, conforming to a device connection standard, and a host connector, conforming to a host connection standard.” 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

Institution of Inter Partes Review IPR2015-01117

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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Denying Institution For Failure to Explain Why Not Substantially the Same as Asserted in Prior Proceeding IPR2015-01476

Takeaway: The Board may exercise its discretion to deny institution of a petition filed by the same petitioner against the same patent as a previous proceeding if there is no showing that the new grounds are better or that the new grounds could not have been raised in the earlier proceeding.

In its Decision, the Board denied institution of all challenged claims (1, 4, 5, 8-10, and 12) of the ’773 Patent. The ’773 patent describes endodontic files that allegedly “have high flexibility, have high resistance to torsion breakage, maintain shape upon fracture, can withstand increased strain, and can hold sharp cutting edges.” Continue reading

Institution Granted In Part Because Only Some Of The Grounds Included A Full Analysis IPR2015-00960, 61

Takeaway: Mere cursory assertions of obviousness, such as “anticipation is the epitome of obviousness” or “rejection under § 103 would also be proper,” do not comply with the rules governing content for a petition for inter partes review. A petition under 37 C.F.R. § 42.22(a)(2) must contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.”

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

Takeaway: Where a shareholder does not control or direct the conduct of a petition, or pay to have a named real party-in-interest initiate any particular proceeding, the shareholder may be considered a passive investor and not a real party-in-interest.

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

Granting Institution Despite Use of References Previously Considered During Prosecution IPR2015-00893

Takeaway: A Petition was not denied under 35 U.S.C. § 325(d) merely for including references previously considered in the initial prosecution of the patent in the grounds of unpatentablity presented in the Petition, when the Petition also included additional references and new arguments including a declaration by an expert witness.

In its Decision, the Board instituted the inter partes review of claims 1-20 of the ’795 patent, because it was persuaded that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Continue reading

Board Uses Discretion to Deny Institution of Petition That is Redundant to Prior Petition CBM2015-00039

Takeaway: The Board may exercise its discretion to deny institution of covered business method patent review where the petitioner cites different prior art references from another proceeding in which it is also a party, but the different prior art references relate to the same protocols that serve as the basis of its challenge in the other proceeding.

In its Decision, the Board denied institution of covered business method (CBM) patent review of claims 1-32 of the ’191 patent. The ’191 patent relates to authenticating a web page. Petitioner challenged the claims of the ’191 patent as follows: (1) patent ineligible subject matter under § 101 for claims 1-32; (2) lack of written description under § 112 for claims 1-16 and 29-32; (3) anticipation by Mosaic Manual of claims 1-9, 11, 12, 14-22, 24, 25, 27-29, 31, and 32; (4) anticipation by SecureWeb Guide of claims 1-9, 11, 12, 14-22, 24, 25, 27-29, 31, and 32; (5) anticipation by Mosaic Manual of claims 10, 13, 23, and 26; (6) anticipation by SecureWeb Guide of claims 10, 13, 23, and 26; (7) obviousness over Mosaic Manual and SHTTP Overview of claims 10, 13, 23, and 26; and (8) obviousness over SecureWeb Guide and SHTTP Overview of claims 10, 13, 23, 26. Continue reading

Denying Institution Of Second Petition By Same Petitioner Against Same Patent IPR2015-00776

Takeaway: Where a petition presents the same prior art and substantially the same arguments as a prior petition, the Board may exercise its discretion and deny institution of inter partes review.

In its Decision, the Board denied institution of inter partes review (“IPR”) of claims 1-53 of the ’041 patent. The Board stated that the Petition advanced the same challenges to the ’041 patent as the IPR2014-01177 proceeding (“the ’01177 proceeding”) in which the board declined to institute IPR. Continue reading