Miscues in Service of the Petition Found Harmless in Granted Institution IPR2015-01466

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Takeaway: A petitioner’s miscues in serving the petition may be deemed harmless by the Board where the patent owner could still timely file a response to the petition and suffers no prejudice.

In its Decision, the Board instituted inter partes review of the ‘077 patent as to claims 22, 27, 29, 31, 32, 39, and 40. “The ’077 patent discusses a control, monitoring, and/or security apparatus and method for vehicles or premises” that “allows an owner, occupant, or other authorized individual to control or to perform various monitoring and security tasks in regards to a premises from a remote location and at any time.” Continue reading

Decision on Institution IPR2015-00056

Takeaway: When service of a complaint in a civil action is waived, the one-year period during which a petition may be filed begins to run when the Waiver of Service is filed with the district court, not when the complaint was first sent to the defendant.

In its Decision, the Board instituted inter partes review of claims 1-20 of U.S. Patent No. 8,381,712 B1. In general, the ’712 patent relates to a barbecue grill that allows for simultaneous gas grilling and charcoal-fueled grilling. Continue reading

Denying Motion to Dismiss Petition IPR2015-00519

Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.” Continue reading

Denying Institution IPR2014-00869

Takeaway: It is not sufficient for a petition to merely establish that all claim limitations are known in the prior art; the petition must also establish that it would have been obvious to combine the prior art elements as recited in the challenged claims.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘726 patent relates to a vehicle accessory system that attaches to the interior of the windshield of the vehicle. Continue reading

Granting Request for Rehearing IPR2014-00415

Takeaway: Compliance with Section 42.105(b) regarding service by electronic means or EXPRESS MAIL is not required under Section 42.106(a)(2) in order for a filing date to be accorded to a petition.

In its Decision, the Board granted Patent Owner’s Request for Rehearing, but only to revisit the Board’s earlier statement regarding compliance with the requirements for service of a petition. Continue reading