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
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
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
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