Granting Motions to Seal Tailored to Confidential Information IPR2014-00488, IPR2014-00607


Takeaway: The standard for granting a motion to seal is “for good cause,” under which the movant bears the burden of proof in showing entitlement to the requested relief, and must explain why the information sought to be sealed constitutes confidential information.

In its Decision, the Board granted Medtronic’s motion to seal certain papers. Specifically, Medtronic moved to permanently seal three documents that were filed under seal: (1) Medtronic’s response to Bosch’s request for production and interrogatory; (2) certain portions of the Declaration of Peter Shimabukuro; and (3) a portion of its Opposition to the Motion to Terminate. Medtronic argued that these papers contain confidential details concerning Medtronic’s acquisition of Cardiocom. Bosch did not oppose or join Medtronic’s motion, taking no position. Continue reading

Petitioner’s Rehearing Request Granted Because Board Misapprehended Anticipation ArgumentIPR2015-00163


Takeaway: The Board misapprehending arguments that the prior art explicitly discloses a limitation as opposed to inherently disclosing it may lead to a granted rehearing request.

In its Decision, the Board granted Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review of claim 12 of the ’121 patent for being anticipated by Koster. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of showing a decision should be modified lies with the party challenging the decision[,]” who “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). Continue reading

Denying Rehearing of Institution Denial IPR2015-00103


Takeaway: A petitioner in the first instance is required to satisfy its threshold burden and include evidence, arguments, and detailed explanation of the significance of the evidence; the Board will not do so for the petitioner.

In its Decision, the Board denied a request for reconsideration of the Decision to Institute that denied institution of challenges to claims 6-8 and 14 of the ’863 patent. Continue reading

Final Written Decision IPR2013-00595


Takeaway: A definition provided in a glossary nearly ten years after the filing date of the patent may still have probative value, and will not be excluded for that reason alone.

In its Final Written Decision, the Board found that Petitioner failed to established by a preponderance of the evidence that claims 1, 18, 35, 36, 39, 44, and 46 of the ’628 patent are unpatentable. The ’628 patent “generally relates to image data collection in general and particularly to an image data collector with coordinated illumination and global shutter control.” Trial was instituted on the following grounds: (1) claims 1, 18, 35, and 46 obvious over Silverbrook, Guidash, and Micron; (2) claims 36 and 39 obvious over Silverbrook, Guidash, Micron, and Hennick; and (3) claim 44 obvious over Silverbrook, Guidash, Micron, and Longacre. Continue reading

Lifting Stay of Concurrent Reexamination IPR2013-00117


Takeaway: The Board lifted the stay of a co-pending ex parte reexamination after the conclusion of the IPR proceeding where the Patent Owner agreed not to amend the original claims considered during the IPR proceeding.

In its Order, the Board lifted the stay of ex parte reexamination Control No. 90/011,935 involving the ’040 patent during a teleconference. In an Order dated April 3, 2013, the Board had ordered a stay in the co-pending ex parte reexamination that included original claims 1-22 and newly added dependent claims 23-63. In this IPR proceeding on June 20, 2014, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 8, 9, 11, 12, 14, 15, and 19-22 of the ’040 patent were unpatentable. Thus, Patent Owner requested the Board to lift the stay. Continue reading

Order Regarding Institution of Inter Partes Review IPR2015-00065


Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.

The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response. Continue reading

Denying Motion to Seal and Joint Motion for Protective Order IPR2014-00377; IPR2014-00378; IPR2014-00379


Takeaway: If the parties wish to impose restrictions on confidential information beyond those in the Default Protective Order, they must show good cause for such restrictions, even if the parties stipulate to the restrictions.

In its Decision, the Board denied without prejudice Patent Owner’s Motion to Seal and a Joint Motion for Entry of a Stipulated Protective Order. The parties filed the Joint Motion attaching the proposed Stipulated Protective Order, and Patent Owner filed a Motion to Seal under the proposed Protective Order.  The parties agreed to modify the Default Protective Order to add a number of heightened categories of confidential information, but the Board found that the categories were not clearly defined and did not explain any differences between certain designations, including any distinction in terms of who may access any particular category of documents. Continue reading

Special Thanks


The past 8 weeks, one of our summer associates, Anthony Glosson, has been contributing to the blog.  Tony is going into his 3L year at The George Washington University Law School.  Tony has been an asset to the blog and we wish him all the best in the upcoming school year.

Final Written Decision IPR2013-00086


Takeaway: Expert testimony (in the form of declarations, for example) is particularly important when issues such as obviousness and whether a document was publicly available before the critical date of the challenged patent are before the Board.

In its Final Written Decision, the Board held that the only claim at issue in this matter, namely, claim 30 of the ‘662 patent, to be unpatentable under 35 U.S.C. § 103(a). According to the Board, this claim would have been obvious in view of the Kantor and Satyanarayanan references, viewed in combination.  A single oral argument was conducted for this proceeding and five other related inter partes proceedings. Continue reading