Monthly Archives: June 2015

Denying Motion for Additional Discovery IPR2014-01240

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Takeaway: In order to obtain additional discovery of the sales of petitioner’s products to evidence commercial success, a patent owner must show not only that the products practice the claimed invention, but also that the commercial success is due to the unique characteristics of the claimed invention, not a characteristic taught in the prior art.

In its Decision, the Board denied Patent Owner’s Motion for Additional Discovery. Patent Owner sought discovery pertaining to its assertion of commercial success as evidence of non-obviousness. Specifically, Patent Owner requested from Petitioner certain revenue numbers.

The Board stated that the party seeking discovery beyond the limited discovery provided by rule must show that the discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5). The Board opined that it is conservative in authorizing additional discovery, and that the party must be in possession of evidence tending to show beyond speculation that something useful, or favorable in substantive value to a contention of the party moving for discovery, will be uncovered.

The Board concluded that Patent Owner had not met its burden because it did not provide the threshold amount of evidence required to show an alleged nexus between the claimed invention and any commercial success of Petitioner’s products. Patent Owner failed to allege that any commercial success is due to the unique characteristics of the claimed invention, and not by a characteristic that was taught in the prior art.

Chums, Inc. and Croakies, Inc. v. Cablz, Inc., IPR2014-01240
Paper 18: Decision Denying Patent Owner’s Motion for Additional Discovery
Dated: April 7, 2015
Patent 8,366,268 B2
Before: Josiah C. Cocks, Jeremy M. Plenzler, and Kristina M. Kalan
Written by: Plenzler

Denying Rehearing of Institution Where Claim Only Specifically Argued in the Claim Chart IPR2015-00180

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Takeaway: A Petitioner’s mere reference to a claim chart appended to a declaration without presentation of a specific analysis of how the prior art reference discloses a limitation of a claim in the Petition will not be considered a contention made for that claim.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of claims 7, 15, 17, 19, 32, and 34 of the ’154 patent. The Board has instituted review of claims 1-4, 6, 8-11, 13, 14, 16, 20, 21, 24, 27, 29-31, and 33 of the ’154 patent. Continue reading →

Denying Institution of Petition Based on Previously Submitted Art IPR2015-00555

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Takeaway: The Board may deny institution when Petitioner does not allege that the applied art was not known or available to it at the time of a prior related proceeding regarding the same patent.

In its Decision, the Board denied institution of inter partes review of claim 21 of the ’228 because Petitioner had failed to allege that the applied art was not known or available to Petitioner at the time of a prior related proceeding of the ’228 patent. The Board also denied Petitioner’s request for joinder of IPR2014-00892 (IPR ’892). Continue reading →

Final Written Decision Requiring Translation Affidavit for Foreign Document Submitted During Prosecution IPR2014-00283

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Takeaway: A translation of a foreign document submitted during prosecution, and qualifying as a record of the Office under § 42.61(b), does not obviate the requirement of an affidavit attesting to the accuracy of the foreign document under § 42.63(b).

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claim 17 is unpatentable but that Petitioner did not prove that claim 26 is unpatentable. The Board also denied-in-part and dismissed-in-part the parties’ Motions to Exclude Evidence. Continue reading →

Institution Denied Where Petitioner Relied On Disclosure of Challenged Patent IPR2015-00318

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Takeaway: Institution of inter partes review was denied where expert declaration relied upon to provide missing element was unavailing due to the expert’s reliance on the challenged patent itself in opining as to what another prior art reference teaches.

In its Decision, the Board denied a Petition requesting inter partes review of claims 1, 8-13, 15, 18, 19, and 23-29 of the ’212 patent. The ’212 patent “describes a particular technique for adaptive channel allocation of subcarriers of an orthogonal frequency division multiple access (OFDMA) cellular communications system including multiple base stations and multiple subscriber units.” Petitioner asserted four challenges under 35 U.S.C. § 103(a). Continue reading →

Institution Denied Where Corresponding Structure Not Identified IPR2015-00456

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Takeaway: There is no exemption from Petitioner’s requirement to identify corresponding structure for means-plus-function limitations under 37 C.F.R. § 42.104(b)(3), even for claims that may have been construed previously in a related court or administrative matter.

In its Decision, the Board denied institution of a Petition requesting inter partes review of claims 1, 2, 4, 7-10, and 15 of the ’576 patent. Claim 1 was the only independent claim challenged. Petitioner challenged the claims as obvious over Kahn, Linn, and Shear. The ’576 patent “generally relates to the distribution and usage rights enforcement of digitally encoded works.” Continue reading →

Institution may occur when a preliminary response fails to address each of the asserted grounds for combining cited references, IPR2014-01544

Patent Owner's Preliminary Response did not adddress each of the multiple grounds for combining cited references asserted in the petition.

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Takeaway: The Board may institute inter partes review when a petition asserts multiple grounds for combining cited references, and patent owner’s preliminary response only takes issue with some, but not all, of the asserted motivations.

In its Decision, the Board instituted inter partes review of claims 1-39 of the ‘147 patent. The basis for the Board’s institution was the potential obviousness of these claims under 35 U.S.C. § 103 in view of the CRD Manual and the HP Journal. The Board gave consideration to the Declaration of Petitioners’ expert Dr. Andrew Hospodor in conducting its analysis.
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A purported thesis, without more, is not a printed publication, IPR2015-00370

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Takeaway: A document purporting to be a thesis, without more, does not establish that the document is a printed publication.

In its Decision, the Board denied the Petition with respect to all challenged claims; no trial was instituted. As found by the Board, the Petition failed to demonstrate a reasonable likelihood of succeeding in showing that the challenged claims would have been obvious. Continue reading →

Federal Circuit: Permissible to require patentee to show substitute claims are patentable over all prior art of record IPR2012-00026, IPR2013-00109

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Takeaway: It is permissible for the Board to require a patentee to show that its proposed substitute claims are patentable over all prior art of record, even if certain prior art did not form the basis for institution of the proceeding with respect to the corresponding challenged claim.

In its Opinion, the United States Court of Appeals for the Federal Circuit affirmed-in-part, reversed-in-part, and vacated-in-part the Final Written Decisions of the Patent Trial and Appeal Board in the inter partes review of U.S. Patent No. 6,757,717 and remanded the case to the Board for further proceedings.

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Decision Denying Motion for Joinder IPR2015-00521

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Takeaway: If a petitioner seeks joinder with an earlier-filed proceeding that is one of several related proceedings, petitioner’s Motion for Joinder should address the impact of joinder on all of the related PTAB proceedings, not just the one it seeks to join. 

In its Decision, the Board denied Petitioner’s Motion for Joinder. Petitioner filed a Petitioner requesting an inter partes review of claims 1, 11, 16, 18, and 22-24 of U.S. Patent No. 7,801,304 along with a Motion for Joinder seeking to join the instant proceeding with Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media Comm., LLC, IPR2014-01532.

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