Denying Joinder With Terminated Proceeding and Denying Institution IPR2016-00414


Takeaway: The one year bar to granting a petition for inter partes review does not apply to a motion for joinder, but the Board will not grant joinder to a terminated proceeding.

In its Decision, the Board denied a Motion for Joinder and Petition requesting inter partes review of the ‘216 patent.  Petitioner had requested to join a petition “instituted on the same grounds of unpatentability over the same claims at issue in this proceeding.” Continue reading

Final Written Decision Finding Certain of the Challenged Claims Unpatentable IPR2015-00309


Takeaway:  The Board may dismiss challenges to dependent claims where the claims do not further limit the claims from which they depend and where correction of the claims would be subject to reasonable debate.

In its Final Written Decision, the Board found Petitioner had shown by a preponderance of the evidence that challenged claims 1, 2, 6, 7, 10, 11, 16, 17, 21, and 22 of the ‘981 patent are unpatentable, “but has failed to do so for claims 3-5 and 12-15.”  The Board further dismissed the Petition with respect to claims 18-20 for improper dependency.  The ‘981 patent “is directed to methods and systems for seismic surveying, including firing at least two energy sources in multiple firing sequences.” Continue reading

Petition for Inter Partes Review Denied IPR2016-00267


Takeaway: In order to prevail on obvious grounds at institution, a petitioner must not only show where each limitation is disclosed in the prior art, but also an adequate motivation to combine the references.

In its Decision, the Board denied review of any of the challenged claims (1-55) of the ’816 Patent. The ’816 Patent describes a system for conducting video visits between two participants, such as prison inmates and outside visitors.

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Disclaimed Claims Will Not Be Considered In Eligibility of Business Method Review CBM2016-00016


Takeaway: If a patent owner disclaims claims when filing a preliminary patent owner response, those claims cannot be considered in the analysis of whether the patent is eligible for covered business method patent review.

In its Decision, the Board denied covered business method patent review of the challenged claims (1-19) of the ’957 Patent. The ’957 Patent relates to Geographic Information Systems (“GIS”), and, in particular, to a National Online Parcel-Level Map Data Porta (“NPDP”) that provides online delivery of parcel-level map data.

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Denying “Delayed” Motion to Seal IPR2016-00149, 150


Takeaway: A party’s delay in bringing a motion to seal a publicly filed exhibit will likely cut against that party’s assertions of alleged prejudice associated with keeping the exhibit available to the public.

In its Decision, the Board denied Patent Owner’s opposed Motions to Seal Exhibits 1003 and 2003 in each of the ’149 and ’150 IPRs. The facts concerning the Exhibits subject to the Motions were not in dispute.  Patent Owner argued that the Exhibits should be sealed as they were the subject of negotiations under FRE 408 and contained confidential business information. Continue reading

Denial of Request for Rehearing Alleging that Evidence had been Disregarded IPR2014-00780


Takeaway: A finding by the Board that expert testimony is unpersuasive for lack of evidentiary support is not likely to be modified through a Rehearing Request.

In its Decision, the Board denied Patent Owner’s Request for Rehearing of the Board’s Final Written Decision finding claims 6 and 8 of the ’835 patent unpatentable. The standard of review for rehearing requests set forth in 37 C.F.R. § 42.71(d) places the burden on the challenging party to show that a decision should be modified.  The Request must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Continue reading

Denying Request to Modify Final Written Decision After Appeal to Federal Circuit CBM2013-00035


Takeaway: The Board may decline to modify a Final Written Decision that was reviewed by the Federal Circuit even where the Final Written Decision includes an error cancelling claims that should not have been included in the ground of unpatentability.

In its Order, the Board denied Patent Owner’s request that the Office not publish a certificate to cancel claims 8-12, 14, and 23 of the ‘516 patent.  Patent Owner alleged that the Final Written Decision entered on December 17, 2014 includes an error—“namely, claims 8-12, 14, and 23, which depend from claim 1 and not claim 2, should not have been included in the anticipation ground of unpatentability.” Continue reading

Demonstrative Exhibits Permitted and Excluded IPR2015-00780; IPR2015-00783


Takeaway: A party is generally not permitted from using a demonstrative slide that discusses a specific portion of an exhibit that was not previously cited in its pleadings. 

In its Order, the Board prohibited and permitted use of certain demonstrative slides by Patent Owner at the oral hearing. The Board noted that while demonstrative slides are visual aids to a party’s oral presentation, they cannot add new evidence to the record of the proceeding and are not an opportunity for additional briefing. Continue reading