Nexus Between Secondary Consideration And Claims Was Not Sufficient IPR2014-01449

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Takeaway: A consent judgment is not sufficient evidence that a product is within the scope of a claim in order for the secondary consideration of objective evidence of non-obviousness tied to that product to be given substantial weight.

In its Final Written Decision, the Board determined that Petitioner has shown by a preponderance of the evidence that claims 40-53 of the ’057 patent are unpatentable. The Board also denied Patent Owner’s Motion to Seal and proposed protective order.  According to the Board, the ’057 patent relates to a cryptographic serial Advanced Technology Attachment (ATA) apparatus and method. Continue reading

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

Final Written Decision Finding No Claims Found Unpatentable Based On Evidence Of Nonobviousness IPR2014-00676

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Takeaway: To sustain an obviousness challenge, the petitioner must show that a skilled artisan would have had reason to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.

In its Final Written Decision, the Board determined that Petitioner had not shown by a preponderance of the evidence that claims 1-8 of the ’856 patent are unpatentable. The Board also denied Petitioner’s Motion to Exclude Evidence and granted Patent Owner’s Motion to Seal. Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00652

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Takeaway: Patent Owner must provide specific evidence regarding the nexus between the claimed features and the proffered secondary indicia for such indicia to be found persuasive.

In its Final Written Decision, the Board concluded that Petitioner has shown by a preponderance of the evidence that claims 1, 3-5, and 10-13 of the ’340 patent are unpatentable. The Board stated that the ’340 patent relates “to drugs formulated as unit oral dosage forms by incorporating them into matrices formed of a combination of poly(ethylene oxide) (“PEO”) and hydroxypropyl methylcellulose (“HPMC”). Continue reading

Insufficient Nexus Was Found for Secondary Considerations in Final Written Decision IPR2014-00679

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Takeaway: The granting of an injunction in a related proceeding, without more, does not demonstrate a nexus between the claimed subject matter and the objective evidence of a secondary consideration of industry praise and acceptance.

In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 7-10 of the ’586 patent are unpatentable, but had not shown by a preponderance of the evidence that claims 1-6, 11, and 12 of the ’586 patent are unpatentable. Petitioner’s Motion to Exclude evidence was granted-in-part, denied-in-part, and dismissed-in-part as moot. Patent Owner’s Motion to Exclude was denied. Continue reading

Motion for Additional Discovery Granted-in-Part, Denied-in-Part PGR2015-00003, PGR2015-00005

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Takeaway: On a motion for additional discovery, the parties should specifically discuss relevant Garmin factors for each category of additional discovery sought and opposed.

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.

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Denying Patent Owner’s Motion for Additional Discovery Regarding Secondary Considerations and Real Parties-in-Interest IPR2015-00083; IPR2015-00085; IPR2015-00088

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Takeaway: Constraints imposed by a protective order in a related district court litigation does not relieve a party from providing reliable, specific evidence and information sufficient to establish that the requested additional discovery is necessary in the interest of justice.

In its Order, the Board denied Patent Owner’s Motion for Additional Discovery of documents regarding alleged secondary considerations and real parties in interest identified by Petitioner. The Motion requested 25-50 documents that were produced as confidential information in a co-pending district court action. Patent Owner based its request on hearsay statements of Patent Owner’s un-named district court litigation counsel that these documents will provide evidence of secondary considerations and activities and interrelationships of various Daifuku corporate entities. Patent Owner argued that it is unable to provide further information because of constraints imposed by a protective order entered in the co-pending district court litigation. Continue reading

Final Written Decision Finding All Claims Unpatentable Over Evidence of Secondary Considerations IPR2014-00758

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Takeaway: Evidence credibly showing almost 20 years of effort in solving a problem solved by the invention was outweighed by the evidence of obviousness presented in the Petition.

In its Final Written Decision, the Board concluded that Petitioner had shown that claims 1-14 of the ’343 patent are unpatentable, and the Board granted Petitioner’s Motion to Seal. The ’343 patent generally relates to grain carts for receiving grain from a combine. Continue reading