Final Written Decision (Motion to Amend) IPR2013-00194

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Takeaway: To establish an earlier date of invention to antedate a prior art reference, an inventor’s statements alone are not sufficient; corroborating evidence is required.

In its Final Written Decision, the Board found that Petitioner had proven by a preponderance of the evidence that the challenged claims (1-8 and 10-12) are unpatentable, denied Patent Owner’s Motion to Amend, and denied Petitioner’s Motion to Exclude. Continue reading

Denying Motion for Leave to File Additional Motion to Amend IPR2013-00333

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Takeaway: A patent owner will still retain any entitled priority date afforded under 35 U.S.C. § 120 for an application that is a continuation of a prior application even if it does not cite to the prior application to show written description support for proposed amended claims.

In its Decision, the Board denied Patent Owner’s request for authorization to supplement its Motion to Amend to expressly claim priority to an earlier-filed patent application and to identify support for the subject matter of the substitute claims in the application. Continue reading

Denying Institution of Covered Business Methods Review CBM2014-00067

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Takeaway: The Board will not grant institution of CBM review of claims with means-plus-function limitations, where those limitations were not construed in the Petition.

In its Decision, the Board denied institution of covered business method patent review. Specifically, Petitioner challenged claims 1-28 of the ’022 Patent as unpatentable under 35 U.S.C. §§ 102, 103, and 112. The ’022 Patent relates to a method of ordering a translation of an electronic document, such as a web page or email, using a “one-click” or “single-click” translation component. Continue reading

Final Written Decision IPR2013-00175

Finding All Challenged Claims Unpatentable and Denying Motion to Amend

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Takeaway: Choosing not to submit declaration testimony when the opposing party does leaves the opposing party’s declaration testimony uncontested, because attorney argument is not evidence.

In its Final Written Decision, the Board determined that all of the challenged claims (1, 4, 13-15, 17, and 19) of the ’674 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’673 Patent is directed to systems and methods for generating infrared light with wavelength in the mid-infrared (IR) range. The Board noted that no oral hearing was held, because neither party desired it. Continue reading

Final Written Decision IPR2013-00155

Finding All Challeneged Claims Unpatentable and Denying Motion to Amend

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Takeaway: 35 U.S.C. § 325(d) provides the Board discretion to deny a petition based on the petition relying on references cumulative to references considered during prosecution of the patent application, but does not require the Board to deny the petition on that basis. Further, merely citing to the original specification for written description support for substitute claims, without further explanation, may not be sufficient where the support is not in haec verba.

In its Final Written Decision, the Board determined that all of the challenged claims (1-6) of the ’489 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’489 Patent is directed to “a communication system for a water softener system that includes a controller configured for communicating with the water softener assembly and a remote display configured for sending and receiving at least one signal to and from the controller to remote location.” The Board noted that no oral hearing was held, because neither party requested it. Continue reading

Denying Motion to Reconsider Institution CBM2014-00020

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In its Decision, the Board denied Petitioner’s request for rehearing on the Board’s Decision to Institute. Specifically, with respect to the Board’s Decision regarding Institution, Petitioner contended that the Board failed to appreciate that the ’137 patent fails to provide a written description for the term “within and between” as it appears in claims 1-67.  The Board denied the request during a conference call, stating that the term “within and between” appears verbatim in the Summary of Invention portion of the specification.  Petitioner argued that the verbatim description in the specification fails to convey possession of the full scope of the claimed invention.  However, the Board disagreed, finding that the language of the specification describes data transfer within a subsystem.  Continue reading

Final Written Decision Finding All Claims Unpatentable and Denying Motion to Amend IPR2013-00102

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Takeaway: In providing evidence on the secondary considerations of commercial success and industry praise, the patent owner must show a nexus between the evidence and the claimed invention, including some evidence that the product relied upon for commercial success actually practices the claims of the patent.

In its Final Written Decision, the Board determined that claims 1-5 and 7-14 of the ’828 Patent are unpatentable. The Board also denied Patent Owner’s Motion to Amend.  Further, the Board denied Petitioner’s Motion to Exclude and dismissed as moot Patent Owner’s Motion to Exclude.  The ’828 Patent describes methods of enhancing the photostability of silver in antimicrobial materials for use in wound dressing and medical devices. Continue reading

Denying Request for Rehearing of Decision on Institution CBM2014-00005

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Takeaway: Patent Owner should include all arguments in the preliminary response, including those which it believes Petitioner has conceded, or it may not be able to raise those arguments in a request for rehearing.

In its Decision, the Board denied Patent Owner’s request for rehearing of the decision to institute covered business method patent review of claims 1-6 of the ’205 Patent. The Board stated that the moving party has the burden of showing the decision should be modified, and the moving party must identify all matters it believes the Board misapprehended or overlooked and the place where each matter was previously addressed in the papers. Continue reading

Denying Request to File Motion to Strike and Expunging Exhibit IPR2013-00194

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Takeaway: In providing written description support for substitute claims, indicating where each limitation is individually described in the original disclosure may not be sufficient to demonstrate support for the claimed subject matter as a whole, which is what is required.

In its Order, the Board expunged a chart that was submitted in support of Patent Owner’s Reply in Support of its Motion to Amend and denied Petitioner’s request to file a motion to strike said exhibit. Relevant Exhibit 2075 is a 91 page chart that lists support in the provisional application for “amended claim 4” in Patent Owner’s Corrected Motion to Amend.  The Board previously determined that the document in Relevant Exhibit 2075, which was originally filed as Exhibit C to Patent Owner’s Motion to Amend, was not proper in this proceeding and ordered Patent Owner to file a corrected motion to amend, which it did without Exhibit C.  In response to Petitioner’s Opposition, which stated that Patent Owner had not established support for the substitute claim, Patent Owner submitted Relevant Exhibit 2075 on the basis that Petitioner was now demanding the information set forth in the chart. Continue reading

Final Written Decision (Motion to Amend) – IPR2013-00093

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Takeaway: In inter partes review, a claim of an unexpired patent is given its broadest reasonable interpretation (BRI) consistent with the specification in which it appears, and a motion to amend may be denied if it does not add patentable subject matter.

In its Final Written Decision, the Board found that the challenged claims of the ‘880 patent were unpatentable as anticipated and obvious in view of the prior art.  Also, the Board denied Patent Owner’s Motion to Amend. Continue reading