Granting-in-Part Petitioner’s Request for Rehearing IPR2015-00710

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Takeaway: Petitioner persuaded a majority of the panel that although its arguments in the Petition were drawn to a claim construction that was not adopted, the Board had overlooked certain arguments that demonstrated a reasonable likelihood claims were anticipated even under the Board’s construction of the claims. Continue reading

All Challenged Claims Found Unpatentable Over Unpersuasive Secondary Considerations IPR2014-01161

Takeaway: One’s expertise, even draped with a skilled-artisan veil, does not entitle a naked opinion to much weight.

In its Final Written Decision, the Board determined that Petitioner had demonstrated by a preponderance of the evidence that claims 1 and 3 of the ’920 patent are unpatentable. Continue reading

Final Written Decision Finding Some Claims Not Unpatentable For Use of Non-Analogous Art IPR2014-01079

Takeaway: A petitioner must show that references are analogous art to be usable in an obviousness challenge by showing that the reference is either in the field of endeavor of the challenged patent or reasonably pertinent to the problem of the challenged patent such that the reference logically would have commended itself to an inventor’s attention in considering his problem.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1, 3, 6-9, 12-16, 20, and 21 of the ’949 patent are unpatentable as anticipated, but had not demonstrated that claims 2, 4, 10, 11 ,17, and 25 are unpatentable. The ’949 patent relates to “a variable movement headrest arrangement for providing support to the head of an occupant of a vehicle upon vehicle impact.” Continue reading

Final Written Decision Upholding Challenged Claims IPR2014-01093

Takeaway: In order to preserve an argument that the patent is not entitled to an earlier effective filing date, a petitioner must make that argument in its petition so that patent owner is on notice that it has to provide evidence to show that the patent is entitled to an earlier filing date.

In its Final Written Decision, the Board concluded that Petitioner had not demonstrated by a preponderance of the evidence that the challenged claims (1-22) of the ’794 are unpatentable. The ’794 Patent provides “a number of methods directed to the multiplexing amplification and/or genotyping reactions of target sequences to create amplicons that can subsequently be detected on an array.” The earliest possible effective filing date of the ’794 Patent is September 2000.

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Request to File Supplemental Declarations Denied IPR2015-00636; IPR2015-00637

Takeaway: The Board will not allow a party to file supplemental evidence outside of the procedure outlined in 37 C.F.R. § 42.64.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to submit supplemental declarations. Patent Owner requested authorization to file a motion to submit two supplemental declarations, a Kretschman declaration and a Ludwick declaration.

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Decision Granting Motion To Submit Additional Information IPR2015-01078, -01080

Takeaway: A party may not successfully oppose a motion to submit supplemental information based on the argument that the supplemental information was not included in a petition, since this is the case with any proposed supplemental information.

In its Decision, the Board granted Petitioner’s Motion to Submit Supplemental Information in each of IPR2015-01078 and IPR2015-01080. The first of these involved an inter partes review of the ‘694 patent, and the second of these involved an inter partes review of the ‘954 patent.

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Decision Granting Institution Of Covered Business Method Review CBM2015-00147

Takeaway: The Board may find a covered business method standing challenge to be unpersuasive when it concludes that the patent owner has neither explained the recitation of financial activities in specification and claims nor asserted that the exclusion for technological inventions applies.

In its Decision, the Board instituted a covered business method review of each of challenged claims 1-23 (i.e., all claims) of the ‘854 patent. In doing so, the Board indicated that it had been persuaded that it was more likely than not that the challenged claims are unpatentable based on multiple obviousness grounds.

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Final Written Decision Finding Challenged Claims Unpatentable IPR2014-01244

Takeaway: To support a proposed motion to amend, written description support must be shown in the original disclosure of the application that issued as the challenged patent rather than in the issued patent itself or a related priority document.

In its Final Written Decision, ordered that each of challenged claims 1-15 of the ‘171 patent are unpatentable. The Board denied Patent Owner’s Motion to Amend, as well.

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Final Written Decision Finding Challenged Claims Unpatentable and Denying Motion to Amend IPR2014-01154

Takeaway: A patent owner’s duty of candor and good faith to the Board may require that the patent owner demonstrate, in a motion to amend, making a good faith attempt to determine whether any prior art known to it discloses the additional limitations introduced in the proposed amended claims, even where a large number of prior art references have been cited in related applications. Continue reading