Takeaway: There is no per se rule that a petitioner must demonstrate how a petition is not redundant to any prior art and argument previously presented to the Office under 35 U.S.C. § 325(d). Instead, the Board has discretion under this statute to consider whether the same or substantially the same prior art or arguments were previously presented to the Office.
In its Decision, the Board concluded that Petitioner had persuasively demonstrated a reasonable likelihood of showing that claims 6 and 33 of the ’565 patent, which relates to rearview vision systems for vehicles that provide the vehicle operator with scenic information in the direction rearward of the vehicle, are unpatentable. Thus, the Board instituted trial with respect to these claims. The Board was not similarly persuaded as to challenged claims 14, 21-24, 34-38, 43-46, and 49, and therefore did not institute trial with respect to these challenged claims. Continue reading
Takeaway: A petitioner must establish that a document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.”
In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7-16 and 23-27 of the ‘679 patent are unpatentable but failed to demonstrate that claims 1-6 and 17-22 are unpatentable. The ‘679 patent “relates to a system and method for peer-to-peer advertising between mobile communication devices.” Continue reading
Takeaway: An asserted ground of unpatentability based on 35 U.S.C. § 101 must sufficiently explain how the actual claim elements relate to nothing substantially more than an abstract idea, and not generalize the claim without addressing all of the specific claim limitations.
In its Decision, the Board denied institution of covered business method patent review of all of the challenged claims (claims 1-3, 7, and 22-24) of the ’914 Patent, because Petitioner had not demonstrated “that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Petitioner had challenged claims 1-3, 7, and 22-24 of the ’914 Patent as unpatentable under 35 U.S.C. §§ 101, 112, ¶ 2, 102(b), and 103(a). The ’914 Patent relates to wired and non-wired data transmission communication systems. Continue reading
Takeaway: Decisions by the Board to institute inter partes review are not appealable, and once an inter partes review proceeding has been instituted, the appropriate claim construction standard to be used for an unexpired patent is the broadest reasonable interpretation standard.
In its Decision, the U.S. Court of Appeals for the Federal Circuit held that decisions to institute inter partes review by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board are not appealable. The Federal Circuit also held that the “broadest reasonable interpretation” standard used by the Board in its claim construction analysis was correct. Finally, the Federal Circuit affirmed the Board’s finding that the challenged claims of the ’074 patent related to a navigation system are invalid. Continue reading
Takeaway: The Board may request the parties to provide claim interpretations for a claim term for the first time at the oral hearing.
In its Final Written Decision, the Board held that Petitioner had failed to demonstrate by a preponderance of the evidence that claims 1, 2, 4, 11-14, and 16 of the ’475 patent are unpatentable. Thus, none of the challenged claims were found unpatentable. The ’475 patent relates to a method for processing a III-Nitride epitaxial layer system on a substrate. The III-Nitrides being used for producing light-emitting devices including light-emitting diodes (LEDs) and lasers. Continue reading
Takeaway: While evidence of control is not explicitly required to establish privity, according to the Trial Practice Guide, the Board still retains an emphasis on control.
In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Decision instituting trial. Patent Owner argued in its Preliminary Response, and again in its Request for Rehearing, that the Petition was barred under 35 U.S.C. § 315(b) because Petitioner’s privies were served with a complaint alleging infringement of the ’970 patent more than one year before the Petition was filed. Continue reading