Denying Joinder Where Agreement to File Consolidated Papers Was Not Obtained IPR2015-00550


Takeaway: Failure of a petitioner to obtain agreement to file consolidated papers with the petitioner in a proceeding to be joined will likely weigh against a motion for joinder.

In its Decision, the Board exercised its discretion under 35 U.S.C. § 315(c) to deny Petitioner’s Motion to Join the Petition to IPR2014-00876 and denied institution of the instant proceeding. Petitioner timely filed its Motion for Joinder within one month of the institution of trial in IPR2014-00876 (“the Apotex IPR”). Both Patent Owner in the instant proceeding and the petitioner in the Apotex IPR filed oppositions to the Motion for Joinder. The Board determined that the reasons for joinder “do not outweigh meaningful reasons not to allow joinder.”

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Granting Request for Rehearing Based Upon Showing That Secondary Ground Would Defeat Swear-Behind Defense IPR2014-01448


Takeaway: The Board granted rehearing of a decision declining to institute an obviousness ground because although it is arguably weaker substantively, it would avoid a swear-behind defense on which the arguably stronger ground was subjected.

In its Decision, the Board granted the rehearing in part, so as to institute an inter partes review of claims 1 and 7 of the ’279 Patent based on obviousness over He and Korodi. However, the Board continued to decline to institute the other obviousness ground asserted in the Petition. In its Decision on Institution, the Board had instituted review of claims 1 and 7 under 35 U.S.C. § 103 in view of Gustafsson and He; declined institution of an anticipation ground based on Naghi; and declined institution of an obviousness ground over He and Korodi or Currie (“Assertion 2”), because Petitioner did not explain adequately the relative strengths and weaknesses of its asserted grounds. Continue reading

Final Written Decision Finding Claims Unpatentable as Anticipated IPR2014-00154


Takeaway: A petitioner need not address an issue in the most clear fashion in order to preserve the right to make the same argument in its reply. The petitioner must merely include the argument in its petition.

In its Final Written Decision, the Board found that all instituted challenged claims (1, 4, 5, and 8) of the ’091 Patent are unpatentable. The ’091 Patent relates to a multimedia system for providing “consistent, timed, coordinated playback of images and/or sounds despite differences in playback system speed or configuration.” Continue reading

Decision Denying Institution Based Upon Limiting Claim Constructions IPR2015-00289


Disclaimer: The law firm of Drinker Biddle & Reath LLP, provider of this blog, served as counsel for Patent Owner in this proceeding.

Takeaway: Patent Owner was able to avoid institution by providing supported claim construction positions including arguing that the preamble was limiting, each of which was adopted by the Board, as well as pointing out the deficiencies in the evidence provided by Petitioner.

In its Decision, the Board denied institution of the Petition determining that Petitioner had “not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims” 1-15 of the ’807 patent. Accordingly, the inter partes review that Petitioner had requested was not instituted. Continue reading

Decision Denying Petitioner’s Request for Rehearing of Decision to Terminate Proceeding IPR2014-00488; IPR2014-00607

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.


Takeaway: Control of the “proxy” party is but one factor in determining real party-in-interest, not a requirement.

In its Decision, the Board denied Petitioner’s request for rehearing on its Decision Terminate the Proceedings and vacate the Decision on Institution. The Board had determined that Petitioner failed to identify Cardiocom, LLC as a real party-in-interest under 35 U.S.C. § 312(a)(2), and accordingly, the Board had terminated the proceeding and vacated its previous decision on institution. Continue reading

Final Written Decision Finding Claims Unpatentable Based Upon Patent Owner’s Narrow Claim Construction IPR2014-00139

All Challenged Claims Unpatentable


Takeaway: The Board refused to incorporate limitations from the specification into the claims where the narrow construction urged by Patent Owner was not provided in the specification with reasonable clarity, deliberateness, and precision.

In its Final Written Decision, the Board concluded that all challenged claims, claims 1-27, of the ’262 Patent are unpatentable.  Petitioner had filed a Petition seeking inter partes review of claims 1, 5-10, 14-19, and 23-27 based on a ground of anticipation by Chase and claims 2-4, 11-13, and 20-22 based on a ground of obviousness over Chase and Scharber. The ’262 Patent relates to a method, computer readable storage medium, and system for dynamic distributed data caching. Continue reading

Review Instituted Based Upon Patent Owner’s Infringement Allegations by Financial Institutions CBM2015-00009


Takeaway: Although not determinative, the fact that a patent owner brings many suits alleging infringement by financial institutions is a factor weighing in favor of a finding that a patent is a covered business method patent.

In its Decision, the Board found that the ‘191 patent qualifies for review as a covered business method patent and that the “Petition demonstrates that it is more likely than not that at least one claim of the ‘191 patent is unpatentable.” Therefore, the Board instituted a covered business method patent review as to claims 1-32 of the ‘191 patent. Continue reading

Denying Rehearing of Institution Denial IPR2015-00103


Takeaway: A petitioner in the first instance is required to satisfy its threshold burden and include evidence, arguments, and detailed explanation of the significance of the evidence; the Board will not do so for the petitioner.

In its Decision, the Board denied a request for reconsideration of the Decision to Institute that denied institution of challenges to claims 6-8 and 14 of the ’863 patent. Continue reading

Instituting Post-Grant Review PGR2015-00003


Takeaway: In order to establish the date of prior art based on a declarant’s testimony, one must provide additional corroborating evidence, and such testimony is given more weight if the declarant is not an interested party.

In its Decision, the Board determined that it was more likely than not that Petitioner would prevail in showing that all challenged claims (1-20) of the ’888 Patent are unpatentable, and instituted post-grant review. The ’888 Patent relates generally to genetic quality and relative market value of livestock. Continue reading

Denying Motion to File Corrected Exhibit IPR2014-00788


Takeaway: If a party files any request that is not explicitly allowed for by the rules, that party must state whether it conferred with the opposing party and whether the opposing party opposes the request.

In its Order, the Board denied Patent Owner’s Request to File Corrected Exhibit. Patent Owner inadvertently omitted an attachment to its declaration. Although Patent Owner stated that a copy of the missing exhibit was provided to Petitioner immediately upon discovery of the omission, Patent Owner failed to indicate whether it conferred with Petitioner or whether Petitioner intends to oppose the filing of the corrected exhibit. Therefore, the Board denied Patent Owner’s Request, but granted leave to re-file after conferring with Petitioner. Continue reading