Final Written Decision IPR2014-00081

Finding All Challenged Claims Unpatentable

LinkedInTwitterFacebookGoogle+Share

Takeaway: To show a nexus between objective indicia and the claimed invention, Patent Owner must provide more than a generalized description of the system or technique that is allegedly encompassed by the claims.

In its Final Written Decision, the Board held that Petitioner demonstrated by a preponderance of the evidence that all of the challenged claims, claims 1-12, of the ’535 patent are unpatentable. The ’535 patent generally “relates to techniques employing medical devices for spinal surgery.” Continue reading

Final Written Decision IPR2013-00539

Takeaway: Establishing written description support for a genus claim in an earlier filed application requires showing “a representative number of species falling within the scope of the genus, precisely defined, such as by structure, formula, chemical name, physical properties, or other properties,” or “structural features common to the members of the genus.”

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that all challenged claims, claims 1-9 and 11-19, of the ’565 patent are unpatentable. The Board did not institute review of claim 10. The ’565 patent is “directed to recombinant yeast microorganisms with increased activity of dihydroxy acid dehydratase (‘DHAD’).” Continue reading

Final Written Decision IPR2014-00288

Finding All Challenged Claims Patentable

Takeaway: Patent Owner prevailed in this case, at least in part, by persuading the Board to revise its original claim construction position provided in its Decision on Institution.

In its Final Written Decision, the Board found that Petitioner had not proven, by a preponderance of evidence, that any of instituted claims, claims 1-5, 7-13, 15, and 16, of the ’662 Patent are unpatentable. The Board had not instituted grounds against claims 6 and 14. The ’662 Patent relates to “a hook for attaching an endoluminal prosthesis, such as a graft or stent, within an artery, vein, or other type of corporeal lumen.” Continue reading

Granting in part Institution and Denying Joinder CBM2015-00015

Takeaway: Even if the Board determines that Petitioner has demonstrated that the challenged claims more likely than not are unpatentable under §101, the Board may decline to institute a CBM proceeding if it has already instituted an earlier CBM proceeding on the same grounds.

In its Decision, the Board instituted a covered business method (“CBM”) patent review of claim 1 of U.S. Patent No. 8,118,221 B2 and declined to institute a CBM patent review of claims 2, 11, and 32. The ’221 patent relates to “a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored” and the “corresponding methods and computer programs.” It describes providing portable data storage together with a means for conditioning access to that data upon validated payment. Continue reading

Decision on Institution CBM2014-00179

Takeaway: Petitioner and any non-party’s shared interest in invalidating a patent, including collaboration together, and invocation of the common interest privilege, is not sufficient to render the non-party a real party in interest.

In its Decision on Institution, the Board instituted a covered business method patent review of claims 1-3, 5, and 6 of the ’510 patent on obviousness grounds under 35 U.S.C. § 103. The Board did not institute trial with respect to any lack of patentability under 35 U.S.C. § 101, finding that Petitioner had not demonstrated it more likely than not that claims 1-3, 5, and 6 do not comply with this section of the statute. Continue reading

Decision Granting Petitioner Page Extension IPR2014-00781

Takeaway: In light of Director Lee’s Posting announcing upcoming changes to PTAB rules, the Board may permit petitioners 25 pages, instead of 15, to reply to a patent owner’s Response.

In its Decision, the Board granted Petitioner’s request for an additional ten pages for its Reply to Patent Owner’s Response.

The Board noted that Petitioner’s request is consistent with USPTO Director Lee’s Posting on March 27, 2015. Continue reading

Decision on Institution IPR2014-01288

Takeaway: The focus of a privity inquiry should be on the relationship between the parties during the prior lawsuit.

In its Decision, the Board instituted inter partes review of claims 1-3 and 6 of the ‘088 based on various obviousness grounds. In doing so, the Board determined that the Petition was not barred under 35 U.S.C. § 315(b). Continue reading

Denying Request for Rehearing IPR2014-01533

Takeaway: It is petitioner’s burden to establish in the petition that a prior art reference constitutes prior art, and when relying upon an earlier priority date, the petition must establish that the prior art patent is entitled to the benefit of that earlier date.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of two asserted grounds of unpatentability. The Board had denied institution of the asserted grounds based upon the Jeffers and Campbell references because Petitioner failed to demonstrate that the references were prior art to the claims of the ’749 patent. Continue reading

Denying Institution IPR2015-00178

Takeaway: In order to show prior art is analogous, one must show it is in the same field of endeavor as the patent at issue or that it is reasonably pertinent to the particular problem with which the inventor was concerned.

In its Decision, the Board denied institution of inter partes review of the ’216 Patent. The ’216 Patent is directed to a system that allows software to run without restrictions if a specified licensing procedure has taken place. Continue reading

Final Written Decision CBM2014-00004

Takeaway: Where an expert provides testimony concerning the meaning of a claim term, the testimony should include factual support for his or her conclusions. Absent such support, the Board may give the testimony little weight.

In its Final Written Decision, the Board determined that claims 21 and 22 of U.S. Patent No. 7,463,151 B1 are unpatentable under 35 U.S.C. § 101.

The ’151 patent relates to mobile wireless networks and, in particular, to providing mobile services using short-range radio communication (“SRC”) devices. SRC devices include, for example, RFID tags, a Bluetooth base station or transponder, and a WiFi device such as a wireless router. Continue reading