Motion for Routine Discovery Granted as to Deposition Transcripts Referred to by Declarants IPR2015-00698, IPR2015-00700


Takeaway: Deposition transcripts that are relied upon by declarants are routine discovery under 37 C.F.R. § 42.51(b)(1)(i). 

In its Order, the Board determined that Patent Owner could use depositions during the cross-examination of Petitioner’s declarants.  Petitioner’s declarations refer to seven deposition transcripts.  During the call, Petitioner offered to allow Patent Owner to use the entirety of the depositions during cross-examinations, but not the underlying exhibits because Petitioner stated they were not reviewed by the declarants.  The Board agreed that the depositions, but not the underlying exhibits, are routine discovery under § 42.51(b)(1)(i).  The Board noted that Petitioner opened the door to use of the depositions when it filed declarations relying upon their content.  The Board further noted that Patent Owner may question the declarants on what material they reviewed in preparing the declarations.

Under Armour, Inc. v. Adidas AG, IPR2015-00698; IPR2015-00700
Paper 37: Order on Routine Discovery
Dated: March 18, 2016
Patents: 8,092,345 B2; 8,579,767 B2
Before/Written by: Jennifer S. Bisk

Final Written Decision with Dissent Differing with Majority’s Technical Analysis IPR2014-01374


Takeaway: Based on their technical backgrounds, judges at the Board are capable of addressing very technical arguments related to the disclosure of prior art and may not always agree with the technical analysis of the other judges on the Board’s panel.

In its Final Written Decision, the Board held that Petitioner had not established by a preponderance of the evidence unpatentability of the challenged claims. The Board also dismissed the parties’ Motions to Exclude Evidence.  Judge Clements dissented from the opinion of the Board. Continue reading

Final Written Decision Finding No Inconsistency between Expert Testimony and Earlier Paper by Same Expert IPR2015-00009


Takeaway: A declarant’s prior statements acknowledging an inventor being the first to report on claimed subject matter may not be inconsistent with later testimony that the same subject matter is unpatentable based on a patent prior art reference because patent references are not necessarily part of the body of work reported in academic literature.

In its Final Written Decision, the Board found that Petitioner established by a preponderance of the evidence that the challenged claims of the ’503 patent are unpatentable. The ’503 patent “is directed to a microfluidic device for analyzing and/or sorting biological materials. Continue reading

Patent Owner’s Discovery Request to Cross Examine Witness Granted as Routine Discovery CBM2015-00179


Takeaway: Cross examination of affidavit testimony obtained during a prior proceeding that is relied upon in support of a petition is authorized under the routine discovery rule and does not require a motion for additional discovery showing good cause. Moreover, it is the petitioner’s burden to produce such a witness for cross examination.

In its Order, the Board authorized Patent Owner to cross examine Petitioner’s witness. Patent Owner had contacted the Board seeking a discovery ruling to allow cross examination of a witness Petitioner had relied upon in showing that a certain reference qualifies as prior art. Petitioner argued that cross examination is not permitted per the routine discovery rule 37 C.F.R. § 42.51(b)(1) and further argued that the witness was unavailable. The Board authorized cross examination and determined that Petitioner—rather than Patent Owner—is responsible for producing the witness for cross examination. Continue reading

Final Written Decision Finding Insufficient Articulated Reasoning Presented in Support of Obviousness Grounds IPR2015-00155


Takeaway: An obviousness conclusion cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion.

In its Final Written Decision, the Board found that Petitioner did not show by a preponderance of the evidence that the challenged claims are unpatentable. The ’243 patent “relates to “telephone communication systems in penal institutions or similar facilities.” Continue reading

Institution Granted Where SEC Filing Found to be Printed Publication IPR2015-01853


Takeaway: The ability to search an SEC form based on the technical content contained therein is not a requirement for such a form to qualify as a printed publication where other means exist to allow one to locate the document upon exercising reasonable diligence.

In its Institution Decision, the Board instituted inter partes review of claims 1-3, 5-8, and 10-41 of the ’826 patent. The ’826 patent “relates to methods of using a sustained release oral dosage form of an aminopyridine composition to treat a neurological disorder, such as multiple sclerosis (‘MS’), by maximizing the therapeutic effect, while minimizing adverse side effects.” Continue reading

Denying Institution Where Declaration Testimony Found To Be Unpersuasive IPR2015-01680


Takeaway: Declaration testimony that repeats the statements presented in the petition without citing any evidence itself is not persuasive.

In its Decision, the Board denied institution of inter partes review of claims 1-18 of the ‘636 patent. The ’636 patent “discloses pharmaceutical compositions ‘that provide for the coordinated release of an acid inhibitor and a non-steroidal anti-inflammatory drug (NSAID)’ (id. at 1:22–24), such that there is ‘a reduced likelihood of causing unwanted side effects, especially gastrointestinal side effects, when administered as a treatment for pain.’” Continue reading

Denying-in-Part Institution on Incorporation by Reference Grounds IPR2015-01739


Takeaway: In determining that a Petition had incorporated by reference 10 pages from other documents, the Board declined to consider the last 10 pages of the Petition, which resulted in granting institution of some grounds of unpatentability, but the incomplete analysis for some additional grounds resulted in those grounds not being instituted.

In its Decision, the Board granted institution of inter partes review of each of the challenged claims 1-25 of the ’811 patent, because the Board determined Petitioner had demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of each of those claims. The ’811 patent “is directed to methods and devices for detecting a position-based attribute of a finger, stylus, or other object with a touchpad or other sensor having a touch-sensitive region that includes a plurality of electrodes.” Continue reading

Denying Rehearing of Decision Not to Institute Based on Lack of Showing of Abuse of Discretion IPR2015-01086


Takeaway: The panel that renders the decision on institution reviews its decision for an abuse of discretion when a request for rehearing is filed.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Decision not to institute trial on both grounds: (1) claims 1, 2, and 8 as anticipated by Nieboer; and (2) claims 1-13 as unpatentable as obvious over Nieboer and Kolter. When rehearing a decision on institution, an abuse of discretion standard is applied, and an abuse of discretion is “indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Continue reading

Final Written Decision Finding Assertions of Long-Felt Need to be Unpersuasive IPR2014-01188


Takeaway: To support a conclusion of nonobviousness, an alleged long-felt need must have been a persistent one that was recognized by those of ordinary skill in the art, must not have been satisfied by another before the challenged patent, and must have been satisfied by the claimed invention. Continue reading