Final Written Decision and Denying Motion to Amend IPR2013-00110


Takeaway: In a motion to amend, the patent owner must show, among other things, how the new structural limitations differ from the original limitations.

In its Final Written Decision, the Board determined that all of the challenged claims (1-5, 7-11, 13, and 14) of the ’259 Patent are unpatentable, denied Patent Owner’s Corrected Motion to Amend, granted in part Petitioner’s Motion to Exclude, and dismissed as moot Patent Owner’s Motion to Exclude. The ’259 Patent is directed to a combination seed capsule, comprising at least one viable seed, a coating of composition comprising a soil conditioning material mounted proximate and disposed outwardly of the outer surface of the seed, and optionally including one or more of inorganic chemical fertilizers, growth enhancer, binder, and/or anti-fungal agent. Continue reading

Denying Institution of Inter Partes Review IPR2014-00282


Takeaway: In presenting an obviousness argument, you must not only show that the prior art references taken together disclose all of the limitations, but also that there would have been a reason for one of ordinary skill in the art to combine the references.

In its Decision, the Board found that Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims of the ’896 Patent, and denied institution. The ’896 Patent relates to a modular transport system for coverings for architectural openings, such as venetian blinds, pleated shades, and other horizontal or vertical blinds and shades.  Specifically, the goal of the invention is to provide a system wherein certain mechanisms are housed in independent, self-contained modules. Continue reading

Denying Motion to Limit Deposition Time Limit CBM2014-00028, 29, 30, 31, 33


Takeaway: “Seven hours for expert depositions should be regarded as a time limit and not a requirement.”

In its Order, the Board summarized the initial conference call held with the parties and denied Petitioner’s request to limit the amount of time for deposing the experts.

No changes were made to the schedule, no protective order had been entered, no requests for additional discovery were expected, and the parties had nothing to report regarding settlement. Patent Owner indicated that it would file a Motion to Amend in CBM2014-00031 to cancel all the challenged claims, which Petitioner did not oppose.  Patent Owner also indicated that it planned to file a contingent Motion to Amend in CBM2014-00033 (and possibly others) and that it would request a conference call with the Board before filing. Continue reading

Final Written Decision and Denying Motion to Amend IPR2013-00116


Takeaway: When asserting evidence of nonobviousness, one must not only show that the thing on which the evidence is based is covered by the patent, but must also show a nexus by establishing that the novel elements in the claim, not the prior art elements, account for the objective evidence of nonobviousness.

In its Final Written Decision, the Board found that claims 94-97, 99, 110, and 111 of the ’915 Patent are unpatentable, granted Patent Owner’s unopposed Motion to Amend canceling claim 37 and claims 40, 47, 66, 67, 73, 76, 78-81, 83, 84, 86-89, 91, and 92 to the extent they depend from claim 37, dismissed Patent Owner’s Motion to Exclude Evidence as moot, and denied Petitioner’s Motion to Exclude Evidence. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00175


Takeaway: In arguing patentability of the challenged claims over the prior art, the Board is more likely to be persuaded by arguments supported by testimonial evidence rather than unsupported attorney argument. Also, substitute claims in a motion to amend must be supported by the original disclosure, and if multiple substitute claims are proposed for one challenged claim, the patent owner must establish a patentable distinction between the substitute claims.

In its Final Written Decision, the Board held that Petitioner showed by a preponderance of the evidence that claims 1, 4, 13, 15, 17, and 19 are unpatentable as anticipated by Sanders and that claim 14 is unpatentable as obvious over Sanders – the only grounds upon which trial was instituted. The Board also denied Patent Owner’s Motion to Amend. Continue reading

Denying Institution of Inter Partes Review IPR2014-00436


Takeaway: The Board may deny institution of inter partes review when other ongoing proceedings raise substantially similar arguments with respect to the same prior art as those supporting the petition under consideration.

In its Decision, the Board denied institution of inter partes review on any of the challenged claims (1-22) of the ’469 Patent.  The Board then denied as moot Petitioner’s motion to join its challenge with a related ongoing inter partes review of the ’469 Patent, IPR2013-00451 (’451 proceeding).  The ’469 Patent relates to a networked system for remotely monitoring and communicating with other individuals, including outpatients of medical facilities, through the use of script programs. Continue reading

Denying Leave to File Motion to Strike CBM2013-00033, 34, 35, 44, 46


Takeaway: Even though the issue of whether arguments exceed the proper scope of a reply are normally decided by the Board when preparing a final written decision, the Board may still enter interlocutory orders disposing of the issue.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to strike and allowed Patent Owner to file the certificate of corrections issued for the challenged patents. Patent Owner sought to strike arguments in Petitioner’s reply that Patent Owner contended were outside the proper scope of a reply.  Although the Board did not authorize the filing of a motion to strike, the Board nevertheless ordered that Petitioner’s arguments were indeed outside the proper scope of its reply. Continue reading

Order Regarding Compliance with Discovery Obligations IRP2014-00566


Takeaway: The Board expects counsel to respond to discussion requests within one to two business days unless the opposing party agrees to schedule the discussion for a later time.

In its Order, the Board directed the parties to discuss Patent Owner’s assertion that Petitioner had not met its discovery obligation to turn over relevant information that is inconsistent with its positions on issues under review. The Board also ordered Petitioner to make any additional disclosures necessary to meet its discovery obligations under 37 C.F.R. § 42.51(b)(1), and required Petitioner to file a statement affirming its compliance. Continue reading

Authorizing Motion for Additional Discovery IPR2014-0097; CBM2013-00049


Takeaway: Parties seeking additional discovery of materials should first attempt to obtain the information from other sources before filing motions for additional discovery, particularly where the materials may have been produced in a related litigation.

In its Order, the Board addressed the initial conference call, which was held for the IPR proceedings, IPR2014-00097 and IPR2014-00098. Also addressed during the call were the related CBM proceedings, CBM2013-00049, CBM2013-00050, and CBM2013-00051.

The Board first addressed the proposed scheduling changes in both the IPR and CBM proceedings. The Board granted the parties’ joint request to extend due dates in the IPR proceedings to account for holiday schedules.  The Board also granted Petitioner’s request to extend the schedule in the CBM proceedings “for a limited period of time” to address the recent U.S. Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, __ U.S. __, No. 13-298, slip op. (U.S. June 19, 2014). Continue reading

Denying Institution of Covered Business Method Patent Review CBM2014-00053


Takeaway: Pre-AIA 35 U.S.C. § 102(e) references do not qualify as prior art on which a covered business method patent review may be based.

In its Decision, the Board denied institution of covered business method patent review. Specifically, Petitioner challenged claims 13-15 and 18 of the ’099 Patent as unpatentable under both 35 U.S.C. §§ 103 and 112.  The ’099 Patent relates to methods of managing, distributing, and/or retailing digital media assets from various content suppliers, allowing consumers to access content from multiple suppliers at a single location and allowing content suppliers to define parameters regarding distribution of media assets. Continue reading