Final Written Decision Finding Challenged Claims Unpatentable CBM2014-00091


Takeaway: A petition for covered business method review may be based on assertions that the patent is anticipated by or obvious under the admitted prior art.

In its Final Written Decision, the Board found that the challenged claims (1, 2, 4-6, 8, 10, and 11) of the ’011 Patent are unpatentable. The ’011 Patent describes a method and system for electronic currency transactions and relates to an approach to electronic currency transaction that utilizes a server in the middle, connected to the parties to the transaction over a network. Continue reading

Claim Language Found Limiting in Denying Institution IPR2015-00858


Takeaway: Institution denied where the challenged claim language “without loss of efficacy” was found to be a claim limitation, which was not an inherent property of a known prior art method.

In its Decision, the Board did not institute inter partes review because Petitioner had not established that there is a reasonable likelihood that it would prevail with respect to claim 4 of the ‘149 patent under 35 U.S.C. § 103(a). The ‘149 patent “is directed to the topical ophthalmic use of brimonidine in combination with timolol for the treatment of glaucoma or ocular hypertension.” Continue reading

Benefit from Earlier Filing Date Results in Denial of Institution IPR2015-00918


Takeaway: Claims in a continuation-in-part application may benefit from an earlier-filed application even without in haec verba support for the challenged claim language.

In its Decision, the Board did not institute inter partes review of claims 1-20 of the ‘563 patent because the allegedly anticipating KenKnight ‘967 reference was not prior art. The ‘563 patent “relates to an implantable system for the antitachycardia pacing of the heart of a patient in need of such treatment.” As an initial matter, the Board found that “none of the terms in the challenged claims requires express construction at this time.” Continue reading

Final Written Decision Confirming All Challenged Claims IPR2014-00599


Takeaway: A patent owner bears the burden of persuasion of proving that a prior art reference is not enabled.

In its Final Written Decision, the Board determined that Petitioner had not met its burden of showing that any of the challenged claims (claims 33-36, 39-41, 44, and 45) of the ’960 Patent are unpatentable. The ’960 Patent is directed to disclosing and claiming improved edge multi-layer, thin-film, laser-line filters. Continue reading

Granting Institution and Motion for Joinder IPR2015-00822


Takeaway: Contractual estoppel likely cannot be asserted by a patent owner as an argument against institution of inter partes review because the Board lacks an explicit statutory basis for considering affirmative estoppel-based defenses.

In its Decision, the Board instituted inter partes review of the ’035 patent and granted Petitioner’s Motion for Joinder to join the instant proceeding with IPR2014-01197 (“the ’1197 proceeding”). The Petition in the instant proceeding presented the same challenges as those asserted in the ’1197 proceeding, relying upon the same evidence and expert declaration.

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Granting Motion For Additional Discovery IPR2015-00545


Takeaway: A limited request for additional documents that will assist the Board in determining whether Petitioner has identified the real-parties-in-interest may be granted provided the request otherwise satisfies the five factors from Garmin v. Cuozzo.

In its Order, the Board granted Patent Owner’s request for additional discovery. The Board also granted both Patent Owner’s and Petitioner’s motions to seal and for entry of a protective order.   Continue reading

Denying Joinder Because No Reason Petitioner Could Not Have Presented All Grounds In Single Petition IPR2015-00482


Takeaway: Even if the timing of proceedings and their speedy resolution would be unaffected by a joinder, the Board may deny joinder where petitioner fails to explain why it could not have combined its petitions into a single petition.

In its Decision, the Board denied Petitioner’s Motion for Joinder to join the instant proceeding with another proceeding filed by Petitioner, IPR2015-00491. In the instant proceeding, Petitioner had sought inter partes review (IPR) of claims 1-32 of the ’040 patent. On the same day as the instant proceeding’s petition was filed, Petitioner filed a second Petition seeking IPR of claims 1-13, 15-28, and 30-32 of the ’040 patent (IPR2015-00491) based on different grounds than the instant proceeding. The Board granted Institution in both proceedings. Petitioner subsequently filed a Motion for Joinder. Continue reading

Final Written Decision Finding No Claims Unpatentable Because Lack of Reason for Combining Known Features IPR2014-00377


Takeaway: Although the Board determined each element of the claimed invention was present in the cited art, the claims were nonetheless non-obvious because of a lack of an adequate explanation of why an ordinary artisan would have been motivated to combine the references.

In its Final Written Decision, the Board concluded that Petitioner had not shown by a preponderance of the evidence that claims 1, 8-10, 13-15, 43, 45, and 46 of the ’280 patent are unpatentable. Both parties also filed motions to exclude the other party’s evidence. The Board denied or dismissed as moot each motion. Continue reading

Motion for Additional Discovery Granted-in-Part, Denied-in-Part PGR2015-00003, PGR2015-00005


Takeaway: On a motion for additional discovery, the parties should specifically discuss relevant Garmin factors for each category of additional discovery sought and opposed.

In its Decision, the board granted-in-part Patent Owner’s motion for additional discovery. Patent Owner sought additional discovery from Petitioner regarding: (a) third parties that may fund or have direction or control over the Proceedings; (b) Petitioner’s knowledge regarding certain secondary considerations of non-obviousness; and (c) the relationship between Petitioner and Petitioner’s proposed expert, Dr. Matt Spangler. Patent Owner submitted 14 proposed Requests for Production and 7 proposed Interrogatories with its Motion for Additional Discovery.

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Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-00351


Takeaway: If a petitioner provides testimonial evidence, then a patent owner should provide testimonial counterevidence in its response in order to adequately rebut petitioner’s arguments.

In its Final Written Decision, the Board found that all challenged claims (claims 1,13, and 14) of the ’262 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’262 Patent relates to an electric cooking appliance, known as a deep well cooker, for preparing and serving hot foods. Continue reading