Granting Rehearing of Decision on Institution Allowing Issue Joinder IPR2015-00762


Takeaway: Majority opinion of enlarged panel determined that the Board has discretion to grant a motion for joinder of two petitions by the same party that includes the same ground of unpatentability, at least where the second petition is fixing a procedural error in the first petition.

In its Decision, the Board granted Petitioners’ Request for Rehearing of the Board’s decision not to institute inter partes review of the ‘349 patent. In granting the rehearing, the Board also reversed its previous decision on institution and instituted the challenge to claims 1-3, 8, 9, 12, 16, and 19 as anticipated by Hideji, and joined this proceeding with IPR2014-01121. Continue reading

Final Written Decision Finding All Challenged Claims Anticipated IPR2014-00482

Takeaway: If one asserts that the opponent’s argument is flawed because it is not supported by expert testimony, one should make sure to explain why testimony was required and to also explain any flaws in the rationale of the opponent’s argument. 

In its Final Written Decision, the Board found that all of the challenged claims (1, 4, 6, 10, 12-15, 17, 20, 22, 26, 28-31, 33, 35, and 37) of the ’180 Patent are unpatentable. The ’180 Patent describes methods for communicating over the Internet.  Continue reading

Terminating Proceeding After Finding that Petitioner Could Have Raised Argument in a Prior Proceeding IPR2014-01465

Takeaway: In determining whether a ground reasonably could have been raised in an earlier proceeding and the petitioner is estopped from asserting that ground, the Board does not look to whether the petitioner had knowledge of the prior art, but rather whether that prior art could have been discovered by a skilled searcher doing a diligent prior art search. 

In its Order, the Board granted Patent Owner’s Motion to Terminate the Inter Partes Review. Patent Owner sought termination because on September 23, 2015, a final written decision was issued pursuant to 35 U.S.C. § 318(a) in International Business Machines Corp. v. Intellectual Ventures II, LLC, IPR2014-00587 (“the prior proceeding”). Patent Owner argued that Petitioner is estopped from maintaining this proceeding pursuant to § 315(e)(1) because Petitioner reasonably could have raised the sole ground of this proceeding during the prior proceeding. In both proceedings, Petitioner challenged the sole claim of the ’694 Patent. Petitioner argued that the sole ground in this proceeding could not have been reasonably raised in the prior proceeding, and that even if Petitioner is estopped, the proceeding should not be terminated and should continue without a petitioner.  Continue reading

Declaration Expunged Where Declarant Refused Cross-Examination IPR2014-01198

Takeaway: If a party proffers a witness’s testimony, that party must make that witness available for cross-examination by the other party.

In its Order, the Board granted-in-part, Petitioner’s Motion to Strike the Declaration of Patent Owner’s witness. Patent Owner submitted the Declaration of Francois Lepron with the Patent Owner Response. Mr. Lepron refused to be deposed for personal reasons. The Board authorized Petitioner to file a Motion to Strike the Lepron Declaration and for Patent Owner to file an Opposition to Petitioner’s Motion to Strike. Continue reading

Dismissing Petitioner Due to the Board Finding Estoppel under Section 325(e)(1) CBM2015-00015

Takeaway: For purposes of estoppel under Section 325(e)(1), a ground of unpatentability still reasonably could have been raised in an earlier proceeding even if intervening case law clarifying jurisprudence becomes available.

In its Order, the Board addressed the question of whether Petitioner Apple “is estopped from arguing the unpatentability of claim 1 of the ’221 patent and claim 1 of the ’458 patent pursuant to 35 U.S.C. § 101 at the November 9th hearing,” ultimately concluding that estoppel was applicable. The Board had previously found both claims to be unpatentable under 35 U.S.C. § 103 in final written decisions issued in related proceedings.

Pursuant to 35 U.S.C. § 325(e)(1):

[t]he petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a) or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

Petitioner argued that estoppel does not apply because the instant unpatentability grounds based on Section 101 could not have been “reasonably” raised because the seminal Alice Supreme Court case did not exist at the time of the earlier CBM Petitions. Moreover, Petitioner asserted that the Board treated CBM proceedings differently pre and post the Alice decision. Patent Owner disagreed and argued that estoppel should apply despite Alice not having been decided.

The Board agreed with Patent Owner. In particular, the Board stressed that Section 325(e)(1) prohibits “any ground” raised or that reasonably could have been raised. “This statutory provision does not make exceptions for intervening case law that merely clarifies jurisprudence.” The Board also noted that although Alice had not been decided, several Supreme Court and Federal Circuit decisions had already been decided regarding patent eligibility of computer-based methods. Thus, the Board concluded that Petitioner reasonably could have raised Section 101 challenges in the previous CBM proceedings.

Petitioner further argued that the statutory language “maintain a proceeding” requires active participation “while the evidentiary record remains open.” Because the evidentiary records of the instant proceedings were closed, Petitioner asserted that it would not be maintaining a proceeding by merely participating in oral argument. The Board was not persuaded, holding that “presenting argument at the hearing with respect to the claims at issue” constitutes maintaining a proceeding according to the statute.

Thus, the Board held that Petitioner Apple could not present arguments with respect to the patentability of claim 1 of the ’221 patent and claim 1 of the ’458 patent at the oral hearing, and dismissed Apple as a petitioner from CBM2015-00015 and CBM2015-00016 with respect to claim 1 of the ’458 patent. In a footnote, the Board addressed Apple’s request to be terminated from the current proceeding to make clear that litigation estoppel does not apply. The Board noted that because Apple was being dismissed from CBM2015-00015 and CBM2015-00016, it would “no longer be a petitioner in these cases.”

Finally, the Board denied Patent Owner’s request to file a Motion to Terminate two proceedings in light of the estoppel findings. In particular, the Board noted that while Section 325(e)(1) addresses actions that may be taken by a petition, the section “does not proscribe actions that [the Board] may take.” Moreover, the Board noted that the record was fully developed and that “[a]dministrative resources will be conserved by resolving all the similar issues at once.”

Apple Inc. v. Smartflash LLC, CBM2015-00015 (Paper 49), CBM2015-00016 (Paper 50), CBM2015-00018 (Paper 37), CBM2014-00194 (Paper 46)
Order on Conduct of the Proceedings Dated: November 4, 2015
Patents: 8,118,221 B2; 8,033,458 B2; 7,942,317 B2
Before: Jennifer S. Bisk, Rama G. Elluru, Jeremy M. Plenzler, and Matthew R. Clements
Written by: Elluru
Related Proceedings: Re-examination Control No. 90/013,385

Final Written Decision Finding Challenged Claims Obvious IPR2014-00764

Takeaway: In an obviousness analysis, the person of ordinary skill in the art is not presumed to be an automaton, but is rather one who is able to envision applications of the teachings of the prior art beyond that explicitly disclosed.

In its Final Written Decision, after having instituted trial on some of the challenged claims, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-11, 15, and 17-26 of the ’832 patent are unpatentable. The Board also denied Petitioner’s Motion to Exclude.

The ’832 patent relates to “a trajectory detection and feedback system, useful to evaluate trajectory parameters of a basketball shot at a basketball hoop.” The Board first addressed claim construction of the unexpired patent under the broadest reasonable interpretation in light of the specification.

The Board construed the term related to the location of velocity determination: “including trajectory locations after the basketball enters the basketball hoop.” Patent Owner argued that the velocity determination should be limited to “post-hoop velocity” or velocity of the basketball after it enters the hoop as opposed to entry velocity of the basketball. Petitioner argued that the term was not so limited and “is broad enough to include the entry velocity,” pointing to an earlier recitation in the claims of “one or more trajectory locations near the basketball hoop.” The Board found that Patent Owner’s proposed construction was unreasonably narrow, and was persuaded that Petitioner’s interpretation was consistent with the broadest interpretation in light of the specification.

The Board then addressed Petitioner’s Motion to Exclude a table in paragraph 34 of Dr. Silverberg’s Declaration (Ex. 2001), and all testimony related to that table. In particular, Petitioner objected to the table because Dr. Silverberg “did not provide—at least as of the conclusion of Dr. Silverberg’s deposition—source data for the numbers in the table,” and cited to 37 C.F.R. § 42.65(a) in arguing that such testimony without underlying facts or data should be entitled little or no weight. Patent Owner argued that the testimony is admissible as it “is founded on his considerable experience,” and that the motion goes “to weight and not admissibility.” The Board agreed with Patent Owner and denied the motion.

Turning to the obviousness ground based on Marinelli and Mullaney, Patent Owner argued that the prior art did not teach measurement of entry angle and velocity of the basketball, as allegedly required by the independent claims, but rather taught calculation of those values. The Board was not persuaded, finding the argument to be not commensurate in scope with the claims. In particular, the Board noted that the claims require “a processor configured to determine the angle and velocity,” which includes “determination by calculation.” Further, the Board was persuaded by Petitioner’s argument that entry velocity and angle were known to be important characteristics in basketball, and that it would have been obvious to apply the disclosure in Marinelli of a modern “accelerometer network and process, to moveable sports objects in order to determine trajectory characteristics.”

The Board also found Patent Owner’s argument regarding post-hoop velocity unpersuasive because the Board did not adopt Patent Owner’s proposed claim construction. Patent Owner also argued that the Marinelli reference only disclosed measurement of spin rate, having no application in basketball. The Board disagreed with the premise that spin rate has no relevance, but even if so, the Board was still not persuaded because Marinelli also disclosed “the determination of various trajectory characteristics of moving sports objects, not only spin.” As the Board noted, it “will not presume that the person of ordinary skill in the art is an automaton unable to envision applications of the teachings beyond that explicitly disclosed.”

The Board also addressed an argument related to whether Marinelli provided an enabling disclosure that arose from questioning during the oral hearing. Even though the judges apparently elicited the argument from counsel for Patent Owner during the hearing, the Board noted that the argument was not found in Patent Owner’s papers, and counsel’s argument at the hearing cannot serve as a substitute for evidence.

As to the dependent claims, Patent Owner did not argue them separately. Thus, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1-6, 11, 15, 21, 23, 25, and 26 would have been obvious over Marinelli and Mullaney. The Board also found that Petitioner had established unpatentability of claims 7-10, 17-20, 22, and 24 on the remaining grounds for similar reasons.

Infomotion Sports Tech., Inc. v. Pillar Vision, Inc., IPR2014-00764
Paper 30: Final Written Decision
Dated: November 12, 2015
Patent: 8,622,832 B2
Before: Ken B. Barrett, James P. Calve, and Jacqueline Wright Bonilla
Written by: Barrett
Related Proceedings: Pillar Vision, Inc. v. InfoMotion Sports Technologies, Inc., No. 2:14-cv-00043-RDP (N.D. Ala. filed Jan. 8, 2014)

Final Written Decision Finding Claims Unpatentable and Not Adopting Patent Owner’s Proposed Construction IPR2014-00724

Takeaway: Optional claim elements do not narrow the claim because they can always be omitted.

In its Final Written Decision, the Board found that Petitioner has shown by a preponderance of the evidence that challenged claims 18–31 of the ‘574 patent are unpatentable. The ‘574 patent “relates to public key encryption (PKE), which is used for securing and authenticating transmissions over unsecure networks.” Continue reading

Denying Authorization to Request Deposition Testimony That Would Carry No Extra Weight IPR2015-00483, 00485

Takeaway: Deposition of a reference’s author may not be warranted where a party’s expert will provide testimony regarding how a person of ordinary skill in the art would have understood the reference and testimony of the author would carry no extra weight.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to compel routine discovery or, in the alternative, authorization to file a motion for additional discovery. Continue reading

Decision On Institution Finding Claims Directed To Patent Ineligible Subject Matter CBM2015-00127

Takeaway: The Board may reach a conclusion of patent-ineligibility when it views the claims as closer to those in Ultramercial, Inc. v. Hulu, than to those in DDR Holdings, LLC v. Hotels.Com, L.P.

In its Decision, the Board instituted a covered business method patent review of claims 4-12 and 16-18 of the ‘720 patent on the ground of patent ineligible subject matter under 35 U.S.C. § 101. On the other hand, the Board denied institution of a covered business method review of claim 17 of the ‘720 patent on the ground of indefiniteness under 35 U.S.C. § 112, ¶ 2.

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Final Written Decision Finding Claims Unpatentable and Not Entitled to Priority Date of Parent Application IPR2014-00414

Takeaway: A petition is allowed to assert that subject matter of the patent-at-issue was not adequately disclosed in a prior application in order to afford it an earlier priority date without running afoul of the rule that a petition cannot challenge whether a claim is unpatentable for failure to comply with the written description requirement.

In its Final Written Decision, the Board found that all of the challenged claims (1-19) of the ’894 Patent are unpatentable. The ’894 Patent relates to a service network that facilitates real-time two-way transactions as opposed to deferred transactions, e.g. e-mail.
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