Category Archives: Bar by Civil Action

Denying Motion for Joinder IPR2014-01485

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Takeaway: The Board may not allow joinder by a party that is already a party to the proceeding to which joinder is sought. 

In its Decision, the Board denied Petitioner’s Motion for Joinder and denied institution of inter partes review of the challenged claims, claims 6, 15, and 16, of the ’566 Patent.  This Petition involves the same parties and same patents at issue as SkyHawke Technologies, LLC v. L&H Concepts, LLC, IPR2014-00438 (“the ’438 proceeding”), with which Petitioner sought joinder. Continue reading →

Decision Denying Institution of Inter Partes Review IPR2014-01505

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Takeaway: The Board cannot institute an inter partes review where the petitioner had the opportunity to substantially control another party’s defense against a complaint alleging infringement of the challenged patent if the complaint was served more than one year before the petition was filed.

In its Decision, the Board denied Petitioner’s request to institute an inter partes review of claims 1-27 of U.S. Patent No. 6,462,713.

The Board began its analysis by considering Patent Owner’s argument that inter partes review is barred by 35 U.S.C. § 315(b), which provides that an inter partes review may not be instituted based on a petition “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Continue reading →

Decision on Institution IPR2014-01288

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Takeaway: The focus of a privity inquiry should be on the relationship between the parties during the prior lawsuit.

In its Decision, the Board instituted inter partes review of claims 1-3 and 6 of the ‘088 based on various obviousness grounds. In doing so, the Board determined that the Petition was not barred under 35 U.S.C. § 315(b). Continue reading →

Granting Request for Adverse Judgment IPR2014-01053

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Takeaway: The Board may terminate a trial based on a Request for Adverse Judgment without delay, even where termination may prevent a subsequently filed IPR by the Petitioner from being joined and thus rendering that subsequent IPR statutorily barred.

In its Order, the Board granted Patent Owner’s Request for Adverse Judgment in regard to claims 1-5 and 8 of the ’501 patent. The Board thus concluded that claims 1-5 and 8 of the ’501 patent are not patentable, and indicated that a certificate canceling these claims would issue in due course. Continue reading →

Granting Institution of Review IPR2014-01475

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Takeaway: A petitioner is not barred from seeking IPR under § 315(b) if it receives a copy of a complaint that the patent owner filed against a third party more than a year before the petitioner files a petition for inter partes review.

In its Decision, the Board instituted inter partes review for claim 4 of U.S. Patent No. 7,162,967 B2. The ’967 patent generally relates to “a method and apparatus for improving marine seismic survey techniques by more effectively controlling the movement and positioning of marine seismic streamers towed in an array behind a boat.”

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Denying Institution IPR2014-01242

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Takeaway: A grant of summary judgment in a related district court litigation does not function as a dismissal without prejudice for purposes of calculating the one year time bar under 35 USC 315(b); instead, the time period will continue to run.

In its Decision, the Board found that Petitioner Johnson Health Tech North America, Inc. (“JHTNA”) lacked standing because it was time-barred under 35 USC 315(b). In addition, because Petitioner Johnston Health Tech Co. Ltd. (“JHT”) is a privy of JHTNA, JHT was also found to lack standing. Therefore, the Petition was denied. Continue reading →

Termination of Proceedings CBM2014-00072-75

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Takeaway: The bar under 35 U.S.C. § 325(a)(1) is a statutory requirement and, thus, cannot be waived.

In its Decision, the Board ordered the termination of the trials in CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-00075, and vacated its Decisions on Institution in each of these proceedings, because it found that Petitioner had filed a declaratory judgment action that resulted in a bar under 35 U.S.C. § 325(a)(1). Continue reading →

Denying Institution IPR2014-00869

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Takeaway: It is not sufficient for a petition to merely establish that all claim limitations are known in the prior art; the petition must also establish that it would have been obvious to combine the prior art elements as recited in the challenged claims.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any challenged claim.  The ‘726 patent relates to a vehicle accessory system that attaches to the interior of the windshield of the vehicle. Continue reading →

Denying Institution IPR2014-01045

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Takeaway: To support a showing of obviousness, there has to be articulated reasoning with rational underpinnings to support a motivation to combine teachings.

In its Decision, the Board found that Petitioner had demonstrated a reasonable likelihood of prevailing in its patentability challenge to claims 1-5, 8-11, 13-16, and 18-20 of the ’897 patent.  Thus, the Board instituted inter partes review of these claims on the asserted ground of anticipation under 35 U.S.C. § 102(b) in view of Svensson.  No other unpatentability grounds set forth in the Petition were authorized. Continue reading →

Granting and Denying Additional Discovery IPR2014-01380

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Takeaway: The likely existence of indemnification agreements and litigation documents potentially relevant to a petitioner’s privity that would time bar the petition by itself is not sufficient to order discovery under routine discovery, but may be sufficient under additional discovery.

In its Order, the Board granted in part Patent Owner’s Motion for Routine or Additional Discovery. Patent Owner alleged that the Petition was time-barred based on Petitioner’s privity with a defendant in a litigation and requested discovery of “Petitioner’s indemnification and control of the legal defense in the ongoing litigation involving the challenged patent” under either routine discovery or additional discovery. Continue reading →