Monthly Archives: March 2015

IPR2014-00309 Final Written Decision 20150323

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Takeaway: An admission of prior art in the specification of the challenged patent can be the basis for inter partes review even if the prior art is not a patent or printed publication. Further, commercial success that shows significant sales in the relevant market, rapid ascension to the dominant position in the relevant market, and eclipsing of all other competing technologies may be sufficient to overcome a finding of obviousness.

In its Final Written Decision, the Board determined that Petitioner had not met its burden of showing that claims 1-10 of the ’640 Patent are unpatentable under 35 U.S.C. § 103(a). The Board also granted in part Patent Owner’s Motion to Exclude, and denied Petitioner’s Motion to Exclude. The ’640 Patent is directed to improving Winchester disc hard drives, and claims a hard disk drive with a pivot bearing assembly located in a bore of an actuator arm. Continue reading →

Authorizing Motion to Submit Supplemental Evidence IPR2015-00065

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Takeaway: A patent owner response that is filed within ten days of institution and that argues the admissibility of evidence in the petition could be construed as objections to the evidence, in response to which the petitioner may serve supplemental evidence.

In its Order, the Board authorized Petitioner to serve supplemental evidence under 37 C.F.R. § 42.64(b)(2) and dismissed its request to file supplemental evidence under 37 C.F.R. § 123(a). Continue reading →

Denying Request for Rehearing IPR2014-00961, 00962

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Takeaway: A parent-subsidiary relationship alone is not sufficient to establish that a party is a real party-in-interest. However, a party that represents the “unified interests” of itself and a petitioner with respect to the proceeding will likely be considered a real party-in-interest.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of inter partes review. A request for rehearing may be granted where the Board abused its discretion in its decision on institution. The moving party “must specifically identify all matters the party believes the Board misapprehended or overlooked.” Continue reading →

Decision on Institution of Inter Partes Review IPR2014-01347

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Takeaway: The Board may consider a copyright date and price printed on the first page of a reference as sufficient evidence of public availability of the document as of the copyright date.

In its Decision, the Board concluded that Petitioner had established “a reasonable likelihood that it will prevail with respect to at least one challenged claim” of U.S. Patent No. 8,508,593 and instituted inter partes review. The ’593 patent generally relates to “accessories used in windshield electronics modules and interior rearview mirror assemblies.” Petitioner sought IPR of claims 1-3, 6-12, 16, 18-31, 33-29, 76-80, and 82-85, arguing that claims 22, 37, and 39 were unpatentable under § 103 as obvious over Campbell, Goldbeck, Kuehnle, and Yanagawa and that the remaining claims were obvious over Campbell, Goldbeck, and Kuehnle. Continue reading →

Decision on Institution IPR2015-00056

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Takeaway: When service of a complaint in a civil action is waived, the one-year period during which a petition may be filed begins to run when the Waiver of Service is filed with the district court, not when the complaint was first sent to the defendant.

In its Decision, the Board instituted inter partes review of claims 1-20 of U.S. Patent No. 8,381,712 B1. In general, the ’712 patent relates to a barbecue grill that allows for simultaneous gas grilling and charcoal-fueled grilling. Continue reading →

Denying Motion to Dismiss Petition IPR2015-00519

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Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.” Continue reading →

Denying Petitioner’s Request for Expanded Panel IPR2014-00771

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Takeaway: The fact that a panel of the Board issues a split decision is not by itself a reason to allow for review by an expanded panel.

In its Decision, the Board denied Petitioner’s request that an expanded panel be allocated to decide the merits of the request for rehearing the denial of institution, and denied Petitioner’s request for rehearing. Continue reading →

Final Written Decision IPR2013-00500

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Takeaway: If a patent owner relies upon reduction of practice by a third party to pre-date a prior art reference, the patent owner must have proof beyond inventor testimony that it conceived of the claimed invention and that it communicated the claimed invention to the third party.

In its Final Written Decision, the Board found that the sole claim of the ’731 Patent is unpatentable. The ’731 Patent relates to “[t]he ornamental design for a multiple crock buffet server” “with two or more oval server bowl inserts situated adjacent opposite ends of the heated server base unit housing.” The parties accepted the Board’s interpretation of the claims from the Decision on Institution. Continue reading →

Granting in part Motion to Seal IPR2014-00377, 378, 379

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Takeaway: If a party demonstrates good cause to seal an exhibit, either in full or in part, the Board may order that terms of a Protective Order apply to the exhibit; however, parties must accept the risk that introducing confidential information into the proceedings may result in its disclosure because there is a presumption that confidential information relied upon in a final written decision of the Board shall become public and the Board may deny a motion to expunge the information to protect the public interest in maintaining a complete and understandable file history.

In its Decision, the Board granted-in-part Patent Owner’s motion to seal certain exhibits. Continue reading →

Denying Request for Rehearing IPR2014-01249

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Takeaway: When requesting review of a claim that includes a means-plus-function term, a petitioner must provide a sufficient description of the corresponding structure disclosed in the specification. If the patent does not include sufficient structure, the Board will not institute an IPR.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision to institute inter partes review of U.S. Patent No. 6,362,850. The Board previously granted Petitioner’s request to institute IPR as to claims 1-7, 15-22, 24-30, and 32-35, but denied its request as to claims 8-14 and with respect to certain grounds. In its Request for Rehearing, Petitioner argued that the Board abused its discretion in refusing to institute an IPR (1) with respect to Grounds 1 and 3 for claims 8-14, and (2) with respect to Grounds 2, 5, 7, and 9-11. Continue reading →