CBM2013-00013 Final Written Decision

Finding all challenged claims unpatentable and denying Petitioner's Motion to Exclude


Takeaway: The Board dismissed all of Patent Owner’s arguments against the grounds of unpatentability, because they were each based on claim construction proposals that the Board declined to adopt.

In its Final Written Decision, the Board found that claims 1-3 and 11 of the ’158 patent do not recite patentable subject matter under 35 U.S.C. § 101 and are unpatentable under 35 U.S.C. § 103, and that claims 1-6 and 11 are unpatentable under 35 U.S.C. § 112, second paragraph. The ’158 patent relates to a method and apparatus for providing real-time, two-way transactional capabilities on the Web.

The Board first addressed claim construction. The Board first noted that it construed claim terms in the same manner as determined in related IPR2013-00194. In the Decision to Institute, the Board further construed “utilizing a routed transactional data structure that is both complete and non-deferred” to mean “using a data structure that facilitates switching a user who selects a transactional application to a service provider program that provides immediate processing,” and concluded that the term is indefinite under 35 U.S.C. § 112, second paragraph.

Patent Owner proposed to construe this term to be more than one element, based on its contention that the term “data structure” means a type of object. The Board determined that the Specification did not support Patent Owner’s proposal, and thus the Board decline to adopt its proposed construction. Further, based on Patent Owner’s contentions and the language of the Specification, the Board concluded that the term “routed transactional data structure” failed to inform a person of ordinary skill in the art of the scope of the claim with reasonable certainty and is thus indefinite.

Patent Owner contended that the claim limitations were drawn to a technological invention. However, the contentions were based on claim constructions that the Board declined to adopt. The Board determined that although the claims recited a transaction performed from a Web application, it was not drawn to the Web application. Thus, the Board did not find that the recited limitations included technical features.

Patent Owner disputed the asserted ground under 35 U.S.C. § 101. However, its arguments were based on a claim construction that the Board declined to adopt, and a misapprehension of the Board’s reasons for concluding claims reciting object routing are not barred under 35 U.S.C. § 101. In the Decision to Institute, the Board noted that “object routing” requires the use of individual networked objects to route a user from a selected transactional application to the processing provided by the service provider. As construed, the Board determined that the element related to a well-known abstract concept. Further, the Board determined that the remaining limitation in claim 1 do not contribute any patent-eligible subject matter.

In the Decision to Institute, the Board instituted trial on the basis that the term “routed transactional data structure,” which was not used or discussed in the Specification, was indefinite because it was persuaded that a potential competitor could not determine whether or not he is infringing. Patent Owner argued that the individual terms in the phrase were easily construed, but admitted that the construction of the phrase itself may be difficult and that reasonable minds may differ. Patent Owner further argued that the claim is only ambiguous if it is “insolubly ambiguous.” However, that standard was rejected by the Supreme Court in Nautilus, which held that 35 U.S.C. § 112, second paragraph requires that a patent’s claim inform those skilled in the art about the scope of the invention with reasonable certainty. Applying the Nautilus standard, the Board found the term indefinite. Also, although the Board construed the term for purposes of its analysis under 35 U.S.C. § 101 and § 103, its incorporation in claim 1 render the claim indefinite, because it did not inform one of ordinary skill in the art the scope of the invention with reasonable certainty.

In assessing the obviousness ground, the Board again was not persuaded by Patent Owner’s arguments because they were based on a claim construction that was not adopted.

Petitioner moved to exclude certain documents as not authenticated or hearsay. Patent Owner opposed, citing case law related to characteristics of a website being sufficient to authenticate the document, and that the documents are relevant to claim construction. Patent Owner tried to authenticate the documents through testimony from the inventor. The Board determined that the inventor’s statements did not “provide factual specificity about the process by which the electronically stored information is created, acquired, maintained, and preserved without alteration or change, or the process by which it is produced if the result of a system or process that does so,” as needed to authenticate electronic evidence by a witness under Federal Rules of Evidence (FRE) 901(b)(1). However, the Board found that the contents and substance of the documents appeared to indicate that they were what they purported to be, and thus was found enough circumstantial evidence to authenticate under FRE 901(b)(4). Petitioner also argued that the documents were hearsay, but the Board stated that it did not rely on the exhibits in the Final Written Decision, and that it could exercise its discretion to assign appropriate weight to the evidence, notwithstanding the hearsay aspects of the exhibits. Accordingly, the Board denied Petitioner’s Motion to Exclude.

SAP America, Inc. v. Lakshmi Arunachalam, CBM2013-00013
Paper 61: Final Written Decision
Dated: September 18, 2014
Patent: 8,037,158 B2
Before: Karl D. Easthom, William V. Saindon, and Brian J. McNamara
Written by: McNamara
Related Proceeding: Benefit Funding Systems LLC v. U.S. Bancorp, Case No 1:12-cv-803-LPS (D. Del.)

IPR2014-00487 Decision Denying Institution

Takeaway: The Board can deny a petition for being substantially identical to a previous request, even if the new petition is to remedy the previous request.

In its Decision, the Board declined to institute inter partes review, using its discretion under 35 U.S.C. § 325(d). Petitioner had filed two other petitions related to the ’156 Patent. One was instituted, the other was not. This Petition was intended to remedy the deficiencies of the IPR that was not instituted. The ’156 patent is drawn to a spinal implant, and methods of spinal fusion using the implant.

Patent Owner argued that the instant Petition “is essentially a duplicate of its previously denied petitioner in the ’504 IPR.” Under 35 U.S.C. § 325(d), the Board “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Petitioner argued that it was responding to a deficiency in the previous IPR by providing new evidence and argument as to how the previously supplied prior art renders the challenged claims obvious. Further, Petitioner argued that the grounds are not redundant to those instituted in the ’506 IPR, given that the grounds are based on different prior art references.

The Board exercised its discretion under 35 U.S.C. § 325(d) and denied the Petition, because Petitioner did not provide persuasive reasoning why to institute over the “same or substantially the same prior art or arguments” that were presented by the ’504 Petition, especially when the ’506 IPR involves all of the same claims challenged in this Petition.

Medtronic, Inc. v. NuVasive, Inc., IPR2014-00487
Paper 8: Decision Denying Institution of Inter Partes Review
Dated: September 11, 2014
Patent 8,361,156 B2
Before: Sally C. Medley, Lora M. Green, and Stephen C. Siu
Written by: Green
Related Proceedings: Warsaw Orthopedic, Inc. v. NuVasive Inc., No. 3:12-cv-02738-CAB-MDD (S.D. Cal.); IPR2014-00504; and IPR2014-00506

IPR2014-00360 Denying Request for Rehearing of Denial of Institution

Takeaway: A request for rehearing must address the rejection as a whole.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision on Institution. The Board entered a Decision on July 25, 2014, instituting inter partes review of claims 1, 2, 6, 12-14, 17, 21-43, 45-51, and 54-71, but not claims 72-82, of the ’216 Patent. Petitioner’s Request for Rehearing was for reconsideration of the decisions not to review claims 72-82.

Petitioner contended that the Board “overlooked the disclosures in the Penwest Statement and Baichwal – and the sections of the Petition that pointed to those disclosures – that render obvious claims 72-82 of the ’216 Patent.” In particular, Petitioner argued that the two references taught certain features of the claims. The Board noted that even if the two references taught the elements contended by Petitioner, Petitioner still failed to explain convincingly how the cited references suggested a composition having the claimed “‘in vitro dissolution test comprising USP Paddle Method’ oxymorphone release results.” Specifically, the Board stated that Petitioner failed to explain “why an ordinary artisan would have had reason to adjust or vary weight ranges of specific gelling agent components to achieve the recited dissolution limitation when making a composition comprising oxymorphone or its salt.”

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., IPR2014-00360
Paper 21: Decision on Petitioner’s Request for Rehearing
Dated: September 16, 2014
Patent 8,329,216 B2
Before: Toni R. Scheiner, Francisco C. Prats, and Jacqueline Wright Bonilla
Written by: Bonilla

Final Written Decision IPR2013-0214

All challenged claims found unpatentable

Takeaway: The Rules governing PTAB proceedings do not permit the incorporation of arguments from one document into another.

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that each of the challenged claims, namely, claims 1-28 of the ’588 patent, is unpatentable. The ’588 patent relates to a method for recovering alcohols from dilute aqueous solutions such as fermentation broths used in connection with a beer still. Continue reading

Final Written Decision and Denied Motion to Amend IPR2013-00248

All instituted claims were found unpatentable

Takeaway: Patent Owner cannot meet its burden of showing that proposed amended or substitute claims are patentable over the prior art by presenting only attorney arguments, and not evidence.

In its Final Written Decision, the Board ordered that Petitioner had proved by a preponderance of the evidence that claims 1-4, 6-9, 11-14, 16, and 18 of the ’978 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Martinez and Capps; and that claims 5, 10, 15, and 17 of the ’978 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Martinez, Capps, and Adobe.  The Board denied Patent Owner’s Contingent Motion to Amend, finding that Patent Owner had not proved by a preponderance of the evidence that proposed substitute claims 19-22 are patentable. Continue reading

Final Written Decision IPR2013-00233

Takeaway: In responding to a Petitioner’s obviousness arguments, Patent Owner must consider the full disclosure of the cited prior art and fully address the proposed combination with arguments that are commensurate with the scope of the challenged claims.

In its Final Written Decision, the Board found that claim 3 of the ’420 patent (the only challenged claim) was unpatentable under 35 U.S.C. § 103 on all three instituted grounds.  The ’420 patent relates generally to a mobile cellular telephone with a Global Positioning  System (“GPS”) receiver that powers up in response to direct interaction between the user and the mobile telephone. Continue reading

Granting Motion to Seal IPR2014-00216

Takeaway: If a party is attempting to modify the default protective order, it must show good cause for doing so, including the inclusion of heightened restrictions on who can view the information.

In its Decision, the Board granted Patent Owner’s Motion to Seal. Patent Owner’s Motion proposed sealing certain evidence in support of its Motion to Amend.  It also proposed the entry of a protective order that differs from the default protective order by creating a special class of confidential information marked “Attorney’s Eyes Only” that would only be available to the opposing party’s outside counsel and experts.  Petitioner did not contest the designation of information as confidential, but argued that it should be subject to the standard protections, not to the heightened “Attorney’s Eyes Only” protection. Continue reading

Denying Motion for Time Extension CBM2013-00056

Takeaway: If the parties are requesting to modify due dates 3-7, they must show good cause for modification, which cannot be based upon speculation of future events.

In its Order, the Board denied-in-part and dismissed-in-part the parties’ Joint Motion to Modify Schedule. The parties requested to modify Due Dates 3-7 in the Revised Scheduling Order by six months to one year in view of a merger agreement between the parties that should close sometime in 2015 after FTC approval.  The parties also requested an extension of time to complete the trial under 35 U.S.C. § 326(a)(11).  The Board issued an Order requiring additional information from the parties, and a Response was submitted.  In the Response, the parties stated that the FTC extended its initial waiting period for at least six month, pushing the closure of the merger for at least six months.  Additionally, if the FTC does not approve the merger, then the FTC may file a lawsuit to keep the merger agreement from closing.  Therefore, the parties may need an extension of multiple years. Continue reading

Denying Motion to File Supplemental Information

Takeaway: Delay in requesting authorization to file supplemental information will work against meeting the burden of showing that allowing the information to be submitted is in the interest-of-justice.

In its Decision, the Board denied Patent Owner’s request for authorization to file a motion to file supplemental information under 37 C.F.R. § 42.123(b). Patent Owner wanted to submit a prior art reference and a declaration of a third-party witness that had been cited in petitions of different IPRs.

The proponent of the supplemental information has the burden of showing that the “supplemental information reasonably could not have been obtained earlier and that consideration of the supplemental information would be in the interests-of-justice.” Patent Owner had the documents as of June 13, 2014, and responded to the Petition in this proceeding on June 20. Patent Owner acknowledged that it had delayed almost three months in requesting the supplemental information, but argued that had just recently been able to review the documents filed with the petitions in the other IPRs to identify the information. The Board determined that the explanation for the delay was not a sufficient showing as to how the interests-of-justice are served.

Petitioner opposed the introduction of the supplemental information because it is too late to substantively respond to it, since its Reply is due September 22, 2014, which was less than one week.

The Board denied the request because although the proposed supplemental information may be relevant to a claim construction position, it is outweighed by the delay in seeking supplementation of the record and the prejudice to Petitioner had the Board allowed the introduction of that information at this stage.

Dell Inc., Hewlett-Packard Co., Netapp, Inc. v. Electronics and Telecommunications Research Institute, IPR2013-00635
Paper 32: Order on Conduct of the Proceeding
Dated: September 19, 2014
Patent: 6,978,346 B2
Before: Miriam L. Quinn and Gregg I. Anderson
Written by: Quinn

Decision on Motion to Correct Filing Date IPR2014-00367

Takeaway: The Board may grant a motion to correct a petition filing date if it can be shown that the inadvertent submission of an incorrect document in place of an intended exhibit was the result of clerical error.

In its Decision, the Board granted Petitioner’s Motion to Correct the Petition Filing Date, which Patent Owner did not oppose.  In particular, the Board accorded the Petition a filing date of January 18, 2014. Continue reading