Denying Request for Rehearing of Final Written Decision (FWD) IPR2013-00048

Takeaway: When presenting evidence in the form of experimental data, parties should set forth sufficient facts to establish the methodology used in the experiments in the first instance; citing evidence in a request for rehearing will not be persuasive.

In its Decision, the Board denied Petitioner’s Request for Rehearing regarding the Board’s Final Written Decision, finding that Petitioner did not demonstrate that the Board misapprehended or overlooked any matters in rendering the final decision. In its Final Written Decision, the Board found that Petitioner had not established the unpatentability of challenged claims 1-4, 6-12, 14-16, 18-28, 30-32, 34-36, 38-44, 46-48, and 50-52 of the ‘189 patent.  Petitioner sought rehearing and challenged the Board’s findings that Petitioner failed to demonstrate that the prior art discloses two claim limitations: “ratio of the change in length” and the “modulus of elasticity” of the outer primary coating. Continue reading

Granting Motion for Additional Briefing on Alice v. CLS Bank CBM2013-00042

In its Order, the Board granted Patent Owner’s request for additional briefing regarding the recent decision of the United States Supreme Court in Alice Corp. Ptt. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (June 19, 2014).  Patent Owner requested five additional pages to respond to Petitioner’s Reply Brief in order to address any issues arising from Alice.  Petitioner opposed the request contending that the briefing was unnecessary as it did not change any pre-existing law.  The Board found that based on the facts of this proceeding, a sur-reply of five pages limited to discussing the impact of Alice was warranted, and also authorized Petitioner to file a sur-sur-reply of two pages limited to the scope of Patent Owner’s sur-reply. Continue reading

Denying Institution of Inter Partes Review IPR2014-00302

Takeaway: In order to show a prior art reference anticipates the claims, one must show that a single embodiment discloses all of the claim limitations. One should pursue an obviousness ground if one asserts that multiple embodiments taken together disclose all of the claim limitations.

In its Decision Denying Institution, the Board found that Petitioner failed to demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims and denied institution of inter partes review.  The ’913 Patent relates to radiant energy systems that have great applicability in military optical system applications for detecting the presence of an enemy employing surveillance equipment and for neutralizing this surveillance capability. Continue reading

Denying Motion for Additional Discovery CBM2013-00042

Takeaway: The Board did not grant additional discovery to obtain a working version of the software product where the ground of unpatentability was based on the software manuals for the software product.

In its Decision, the Board denied Patent Owner’s request for additional discovery. Patent Owner requested additional discovery to obtain an installable and working version of the software product that is described in the printed publication software manuals asserted by Petitioner to anticipate claims at issue in the CBM proceeding. Continue reading

Denying Institution of Inter Partes Review IPR2014-00333

E.I. DuPont DeNemours and Co. v. Monsanto Technology LLC

Takeaway: A petitioner relying upon a single prior art reference as teaching all the limitations of an independent claim based on a particular claim construction, only adding secondary references for the limitations of the dependent claims, assumes the risk that institution will be denied for all claims if any limitation is found lacking in the alleged anticipatory reference based upon an alternative claim construction.

In its Decision, the Board denied institution of inter partes review of claims 1-11 of the ’143 Patent because Petitioner did not establish a reasonable likelihood of prevailing on any challenged claim. The ’143 Patent describes plant breeding methods for “sampling transgenic seeds to test for the presence or absence of a transgene or the zygosity of a transgene (number of transgenes) in a population of seeds in a high throughput manner.” Continue reading

Final Written Decision IPR2013-00138

Holding that Petitioner failed to prove that any of the challenged claims were unpatentable

Takeaway: Petitioner was unable to prove unpatentability relying solely on anticipation that relied on inherent or implicit disclosures within the cited reference. The Board was not persuaded that certain elements of the claims were necessarily present in the reference.

In its Final Written Decision, the Board found that Petitioner did not prove claims 1–18, 20–38, and 40–56 of the ’736 Patent were unpatentable. The ’736 Patent relates to distributing and enforcing usage rights for digital works. Continue reading

Final Written Decision IPR2013-00252

Takeaway: In arguing that a reference teaches away from combination with another reference, one must show that the reference suggests that the developments flowing from its disclosures are unlikely to produce the objective of the patented invention.

In its Final Written Decision, the Board determined that claims 1-10 of the ’291 Patent are unpatentable and that claims 11-16 of the ’291 Patent are not unpatentable. The ’291 Patent relates to decompressing compressed video data.  The Board instituted review on the ground challenging claims 1-16 as obvious over Haskell and Rossmere. Continue reading

Decision Granting Petitioner’s Motion For Joinder IPR2014-00556

Takeaway: While an inter partes review may not be instituted based on a petition filed more than one year after the petitioner is served with a patent infringement complaint, this time limitation does not apply to a request for joinder.

In its Decision, the Board granted Petitioner’s Motion for Joinder with IPR2014-00003.  The Board granted this Motion despite Patent Owner’s Opposition to the Motion, and with the knowledge that the Petitioner in IPR2014-00003 was an entity separate from the Petitioner in the instant proceeding.  If not for the Board granting Petitioner’s Motion for Joinder, the instant proceeding would have been time-barred under 35 U.S.C. § 315(b). Continue reading

Decision Denying Institution IPR2014-00334

Takeaway: A proposed combination of references does not render a claimed invention obvious if the resulting combination does not include each and every limitation of the claimed invention.

In its Decision, the Board denied institution of inter partes review of claims 1, 2, 5-16 and 18-22 of the ‘439 patent.  According to the Board, Petitioner had not established that there is a reasonable likelihood that it would prevail on proving that these claims were unpatentable. Continue reading

Denying Rehearing and Expanded Panel Requests IPR2014-00236, 239, 240

Takeaway: A rehearing request of a decision denying institution must include more than a mere disagreement with the Board’s analysis in the decision, and allegations of a judge’s impropriety tainting the decision on institution should be supported by more than speculation.

In its Decision, the Board denied Petitioner’s Request for Rehearing and its Request for Expanded Panel. The Board had denied institution of inter partes review in each of the three Petitions as not having been timely filed within the one-year period set forth in 35 U.S.C. § 315(b).  Petitioner argued in its Rehearing Request that the Board’s Decision was based on a clearly erroneous interpretation of the statute.  Petitioner also requested an expanded panel because of “an alleged appearance of impropriety regarding the judge who authored the Decision Denying Institution” and the importance of the time-bar issue. Continue reading