Final Written Decision Finding No Inconsistency between Expert Testimony and Earlier Paper by Same Expert IPR2015-00009

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Takeaway: A declarant’s prior statements acknowledging an inventor being the first to report on claimed subject matter may not be inconsistent with later testimony that the same subject matter is unpatentable based on a patent prior art reference because patent references are not necessarily part of the body of work reported in academic literature.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ’503 patent are unpatentable. The ’503 patent “is directed to a microfluidic device for analyzing and/or sorting biological materials. Continue reading

Institution Denied IPR2015-01792

Takeaway: If a patent owner presents evidence of secondary considerations of non-obviousness, a petition asserting obviousness should address the evidence substantively.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing unpatentability of any of the challenged claims (1-10) of the ’522 Patent, and denied institution of inter partes review. The ’522 Patent is directed in part to polynucleotides encoding the extracellular region of an insoluble human TNF receptor (“TNF-R”).

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Final Written Decision finding Displayed Poster to be a Printed Publication IPR2014-00513

Takeaway: A poster that is displayed may be considered a printed publication where the intended audience of the poster session necessarily includes interested persons of ordinary skill in the art pertinent to the challenged claims.

In its Final Written Decision, the Board found that Petitioner had proven that claim 10 is unpatentable as obvious, but had not proven the unpatentability of claims 17 and 18. The Board also granted Patent Owner’s Motion to Amend and denied its Motion to Exclude Evidence. The ’550 patent “discloses using a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.” Continue reading

Final Written Decision finding Four-Month Period of Inactivity Sufficient to Defeat Patent Owner’s Claim of Diligence IPR2014-01209

Takeaway: Arguments that disregard relevant parts of a prior art reference without sufficient explanation as to why a person of ordinary skill would do so may be found to be impermissible hindsight reasoning. Continue reading

Final Written Decision Finding Assertions of Long-Felt Need to be Unpersuasive IPR2014-01188

Takeaway: To support a conclusion of nonobviousness, an alleged long-felt need must have been a persistent one that was recognized by those of ordinary skill in the art, must not have been satisfied by another before the challenged patent, and must have been satisfied by the claimed invention. Continue reading

Final Written Decision Finding Challenged Claim Unpatentable IPR2014-01158

Takeaway: If commercial success is based upon licensing, the patent owner must comment on whether the licenses were entered into because of ongoing or threatened litigation in order to allow the Board to properly evaluate the licenses.

In its Final Written Decision, the Board determined that Petitioner had shown that all challenged claims of the ’888 Patent are unpatentable.   The ’888 Patent discloses an audio recording device that the specification terms a “music jukebox.”

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All Challenged Claims Found Unpatentable Over Unpersuasive Secondary Considerations IPR2014-01161

Takeaway: One’s expertise, even draped with a skilled-artisan veil, does not entitle a naked opinion to much weight.

In its Final Written Decision, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that claims 1 and 3 of the ’920 patent are unpatentable. Continue reading

Final Written Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend IPR2014-01154

Takeaway: A patent owner’s duty of candor and good faith to the Board may require that the patent owner demonstrate, in a motion to amend, making a good faith attempt to determine whether any prior art known to it discloses the additional limitations introduced in the proposed amended claims, even where a large number of prior art references have been cited in related applications. Continue reading

Denial Of Request for Rehearing Of Final Written Decision That Alleged Secondary Considerations Without Sufficient Evidence IPR2013-00549

Takeaway: Patent Owner should provide specific citations to paragraphs or portions of evidence it seeks to rely upon in its assertion of secondary considerations, rather than attempt to incorporate by reference or otherwise make broad contentions regarding secondary considerations.

In its Decision, the Board denied Patent Owner’s request for rehearing. The Board modified its Decision to replace the word “captioned” with the word “voice-to-text.” This modification, however, does not affect the substance of the underlying Decision. Continue reading