Final Written Decision Requiring Translation Affidavit for Foreign Document Submitted During Prosecution IPR2014-00283

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Takeaway: A translation of a foreign document submitted during prosecution, and qualifying as a record of the Office under § 42.61(b), does not obviate the requirement of an affidavit attesting to the accuracy of the foreign document under § 42.63(b).

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claim 17 is unpatentable but that Petitioner did not prove that claim 26 is unpatentable. The Board also denied-in-part and dismissed-in-part the parties’ Motions to Exclude Evidence. Continue reading

Granting Motions to Submit Corrected Translations IPR2014-01555, 01556, 01558

Takeaway: The Board explained that attorneys should be able to recognize submissions of documents that “technically” do not comply with the rules, but which cause no prejudice, and stipulate to file a corrected document that saves all involved time and expense.

In its Decision, the Board granted Petitioner’s motions to accept verified translations, which were opposed by Patent Owner. Continue reading

Denying Rehearing IPR2014-01121, 01122, 01123

IPR2014-01121, 01122, 01123

Takeaway: The failure to include with a petition an attesting affidavit for an English translation of a foreign reference may potentially be addressed through the submission of supplemental evidence; however, a new filing date may be assigned to the petition based on the service date of the supplemental evidence.

In its Decision, the Board denied Petitioner’s request for rehearing of its decision denying institution of the 01123 IPR and denying certain grounds in both the 01121 and 01122 IPRs. In particular, Petitioners sought rehearing of the Board’s determination that Petitioner relied upon a reference that was defective under 37 C.F.R. § 42.63(b) – a Japanese reference filed with an English translation but without an attesting affidavit as required by the rule. Continue reading

Order Regarding Translator Declarations CBM2014-00131, CBM2014-00137

Takeaway: A patent owner is entitled to cross-examine, as routine discovery, individuals who translate prior art references that form the basis for the Board’s institution of review, and the Patent Owner is not required to produce documents to be used in the cross-examination before the deposition.

In its Order, the Board resolved a dispute between the parties concerning whether Patent Owner is permitted to depose individuals who translated one of the references that forms the basis for the Board’s institution of review. In particular, the Board ordered Petitioner to file the declarations of individuals who translated portions of the prior art reference, ordered that Patent Owner is authorized to cross examine the individuals who translated the reference, and denied Petitioner’s request to file a motion for additional discovery. Continue reading

Granting and Denying Motion to Submit Supplemental Information IPR2014-00283

Takeaway: Supplemental information, offered to support an argument on the merits, should not be filed as an exhibit with the motion to submit the supplemental information, but rather, should be filed after the motion is granted.

In its Decision, the Board granted-in-part Petitioner’s Motion to Submit Supplemental Information. As a preliminary matter, the Board noted that Patent Owner filed an opposition and Petitioner filed a reply to the opposition without authorization by the Board.  Although the Board considered the unauthorized papers in this case, it explained that parties must seek authorization to file a responsive paper when the motion requires authorization. Continue reading

Granting Motion to Submit Supplemental Information IPR2013-00540, 541, 544

Takeaway: A challenge to the public availability of a prior art reference should be asserted in a patent owner response while the admissibility of any evidence purportedly establishing the prior art reference’s public availability may be subject to a motion to exclude.

In its Decision, the Board granted Petitioner’s motion to submit supplemental information. The Board also allowed the parties additional briefing based on the supplemental information and reset Due Date 7 (Oral Hearing) to accommodate consideration of the supplemental information. Continue reading

Final Written Decision IPR2013-00218

Takeaway: In applying the prior art to the challenged claims, the parties should take into account the knowledge of one of ordinary skill in the art, even when the instituted ground is one of anticipation.

In its Final Written Decision, the Board found that Petitioner had proven by a preponderance of the evidence that claims 1-5, 22, and 34 of the ’003 patent are unpatentable. The ’003 patent generally “describes generating and displaying stereoscopic panoramic images by using a rotating camera.” Continue reading