In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Final Written Decision finding claims 1-8 and 10-12 of the ‘492 patent unpatentable. Patent Owner asserted in its Request that, among others: the Board’s claim construction and analysis of the prior art were incorrect; that the proceedings are unconstitutional, and that counsel for Petitioner and its expert fraudulently misled the PTAB. Continue reading
Monthly Archives: November 2014
Decision Denying Institution IPR2014-00852
In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim. The ‘134 patent relates to “a hybrid vehicle with an internal combustion engine, a traction motor, a starter motor, and a battery bank, all controlled by a microprocessor.” Continue reading
Decision Denying Institution IPR2014-00776
In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim. The ‘054 patent related to “an adsorption drying apparatus [and] an adsorption drying method . . . for drying compressed gases.” Petitioner relied upon four prior art references – Jonsson, Vertriest, White, and Dunne – as well as the declaration of Dr. Ritter. Continue reading
Final Written Decision IPR2013-00309
Takeaway: The Board may consider a demand letter by patent owner in construing terms of the patent.
In its Final Written Decision, the Board found that claims 1-12, 14, and 15 of the ’381 Patent are unpatentable, but that Petitioner did not demonstrate by a preponderance of the evidence that claim 13 of the ’381 Patent is unpatentable. The ’381 Patent relates to a virtual copier (“VC”) system that enables a personal computer user to scan paper from a first device and copy an electronic version of it to another remote device or integrate that electronic version with a separate computer application in the network. Continue reading
Denying Authorization to File a Revised Motion to Amend IPR2014-00245
In its Order, the Board denied Patent Owner’s request for authorization to file a revised motion to amend. Also, the Board authorized Patent Owner to file a supplemental paper addressing a proposed substitute claim. Continue reading
Denying Motion to Seal and Joint Motion for Protective Order IPR2014-00377; IPR2014-00378; IPR2014-00379
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
Denying Motion to Submit New Testimonial Evidence IPR2014-01365
In its Order, the Board denied Patent Owner’s request to file the deposition testimony of an expert, taken in a related IPR proceeding, with its Preliminary Response. During a conference call, Patent Owner argued that the transcript of the deposition of Petitioner’s expert in a related IPR proceeding included testimony relevant to limitations in claims 72-82 of the ’216 patent. Further, Patent Owner argued that contentions made by the expert in the petition for this proceeding were refuted by statements made by that expert during his deposition in the other proceeding.
Final Written Decision IPR2013-00289
Takeaway: The Board is careful not to import limitations from the specification.
In its Final Written Decision, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that claims 1-19 of the ’237 patent were unpatentable. The ’237 patent relates to tournament play having a qualifying round and a playoff round where the qualifying round is played between a player through a computer terminal and a host computer, while the playoff round is played with all players playing simultaneously within a specific time frame. The Board found that Petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, and 8-19 are anticipated under 35 U.S.C. § 102 by Walker, and claims 4, 6, and 7 would have been obvious under 35 U.S.C. § 103 over Walker.
Denying Petitioner’s Request for Rehearing of Institution Denial CBM2014-00114
In its Decision, the Board denied Petitioner’s request for rehearing of the denial of review of claims 1 and 2 of the ’387 Patent for failure to identify specific portions of the specification that describe the corresponding structure of each means-plus-function limitation recited in these claims. Continue reading
Granting Request for Rehearing but Declining to Modify its Previous Decision IPR2014-00745
In its Decision, the Board granted Petitioner’s Request for Rehearing. However, after reconsidering the ground for which rehearing was requested, the Board declined to modify its previous Decision. Continue reading