Proceedings Not Terminated After Federal Circuit Appeal Dismissed CBM2015-00022


Takeaway: If claims in an instituted trial are held unpatentable in a co-pending district court case and the patent owner dismisses its appeal after the Board institutes trial, the Board is not required to terminate its own proceedings.

In its Final Written Decision, the Board determined that all challenged claims (claims 8-12) of U.S. Patent No. 8,301,466 are unpatentable under 35 U.S.C. § 101. The ’466 patent relates to “providing a method for consumers to request their medical records from health care providers and store their medical records for online access.”

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Institution Under Section 101 Denied Where Patent Required Particular Electronic Searching Process CBM2015-00113

Takeaway: Challenge under § 101 to digital identification patent not instituted where the claims require particular types of electronic searching processes.

In its Decision, the Board instituted covered business method patent review for prior art challenges, but denied institution of challenges brought under 35 U.S.C. §§ 101 and 112. The ‘464 patent “relates to identifying a work, such as a digital audio or video file, without the need to modify the work,” which “can be accomplished through the extraction of features from or about the work, and comparison of those extracted features with records of a database or library.” Continue reading

Denying Institution Although Petitioner’s Economic Motive for Filing Petition Was Not Abuse of Process IPR2015-01018

Takeaway: Congress did not limit inter partes reviews to parties having a competitive interest in the technology covered by the challenged patents, and an economic motive for challenging a patent claim alone does not raise abuse of process issues.

In its Decision, the Board did not institute inter partes review of any challenged claim of the ‘059 patent. The ‘059 patent “is directed to a method for controlling access to a sensitive prescription drug prone to potential abuse or diversion, by utilizing a central pharmacy and database to track all prescriptions for the sensitive drug.” Continue reading

Claims Not Found Unpatentable Where Cited Art Was Not Shown To Be Analogous IPR2014-00732

Takeaway: Petitioner cannot rely on the Board’s Decision on Institution to persuade the Board that the cited art is analogous; rather, the burden of persuasion is on the petitioner to prove unpatentability by a preponderance of the evidence.

In its Final Written Decision, the Board held that Petitioner had not shown by a preponderance of the evidence that claims 1-12 of the ’748 patent are unpatentable. The Board instituted inter partes review based on the following challenges to claims 1–12 under 35 U.S.C. § 103(a): (1) claims 1-3, 5, and 10-12 were alleged as obvious over Spirov, Bathiche, and Shkolnikov; (2) claims 4, 8, and 9 were as alleged obvious over Spirov, Bathiche, Shkolnikov, and Fouche; and (3) claims 6 and 7 were alleged as obvious over Spirov, Bathiche, Shkolnikov, and Barr. Continue reading

Denying Institution Where Claim Terminology is Construed as Defined in the Specification IPR2015-00675

Takeaway: The Board will construe claim terminology consistent with the definition of such terminology as provided in the specification.

In its Decision, the Board denied Petitioner’s request for an inter partes review as to each of challenged claims 1-6, 8, and 9 of the ‘530 patent. Thus, a trial was not instituted.

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Thesis Does Not Qualify As Prior Art IPR2015-01033

Takeaway: The Board may determine a thesis was not “publicly accessible,” and thus not prior art, when the record shows that a microfiche copy in a library was indexed only by the author’s last name and the first word of the work’s title.

In its Decision, the board declined to institute inter partes review of claims 1-4 of U.S. Patent No. 8,327,011. The ’011 patent relates to a streaming media buffering system.

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Reverse Auction Claims Found Ineligible for Patent Protection CBM2014-00119

Takeaway: Claims involving a conventional system interface, routine data gathering, and routine calculations will likely be found patent ineligible under § 101.

In its Final Written Decision, the Board found that all of the challenged claims (1-39) of the ’211 Patent are unpatentable under 35 U.S.C. § 101, and denied Patent Owner’s Motion to Amend. The ’211 Patent is drawn to a method of conducting a telephone- or Internet-based reverse auction, where the reverse auction is transmitted to users on a medium. Continue reading

Statutory Disclaimer Is Not Always Treated As An Adverse Judgment IPR2015-00736

Takeaway: The Board may elect not to treat a patent owner’s statutory disclaimer as an adverse judgment based on 37 C.F.R. § 42.73(b)(1)-(4).

In its Decision, the Board denied Petitioner’s Request for Rehearing. The Board had denied institution of inter partes review of the ’591 patent because Patent Owner filed a statutory disclaimer under 35 U.S.C. § 253. Petitioner argued that the Board should have considered this disclaimer as a request for adverse judgment. The Board did not designate the Decision Denying Institution as an adverse judgment for two reasons. Continue reading

Final Written Decision of Expired Patent Uses Phillips Construction IPR2014-00635

Takeaway: For an expired patent, the Board may apply the Phillips standard to construe claim language; under Phillips, claims are given their ordinary and customary meanings as understood by an ordinary artisan at the time of the invention.

In its Final Written Decision, the Board held that Petitioner has shown by a preponderance of the evidence that claims 1-13, 15-18, and 21-23 are unpatentable. The ’129 patent, as described by the Board, relates to systems and methods for controlling a computer system, particularly a virtual reality computer system, using audio signals. Petitioner challenged that patentability of the ’129 patent as follows: (1) claims 10 and 11 are allegedly anticipated by Tsumura, (2) claims 5-7, 9-12, 16-18, 22, and 23 are allegedly anticipated by Lytle, (3) claims 1, 12, 13, 15, and 21 are allegedly anticipated by Adachi, (4) claims 1, 8, 12, 13, 15, and 21 are allegedly obvious over Lytle and Adachi, and (5) claims 1-4, 12, 13, 15, and 21 are allegedly obvious over Thalmann and Williams. Continue reading

Conduct of the Proceeding IPR2014-01002

Takeaway: The Board will not enter adverse judgment against a patent owner who cancels the challenged claims in a co-pending reexamination proceeding before a reexamination certificate is issued and the time to appeal has expired.

In its Decision, the Board declined to enter adverse judgment against Patent Owner under § 42.73(b)(2) and also determined that, under the circumstances presented, termination of the proceeding without a final written decision (as requested by Patent Owner) was not appropriate.

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