Motion to Terminate Denied IPR2015-00739


Takeaway: The statutory requirements under 35 U.S.C. § 312(a) for consideration of a petition are not jurisdictional. Therefore, the Board can allow a petitioner to rectify a lapse in compliance without terminating the proceedings.

In its Decision, the Board denied Patent Owner’s Motion to Terminate the Proceeding based upon lack of jurisdiction of the Board to institute inter partes review.

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Parties’ Unauthorized Mandatory Notices Submissions Expunged IPR2015-00040


Takeaway: The filing of an appropriate notice concerning a related proceeding requires prior Board authorization and is not a briefing opportunity to advocate a desired conclusion in the matters pending before the Board.

In its Order, the Board expunged the parties’ Supplemental Mandatory Notices as constituting unauthorized papers. The Board further scheduled a joint conference call “to discuss the matter of mandatory notices as they pertain to a related proceeding.” Continue reading

Denying Institution Where Declaration and Exhibits Lacked Specificity By Including Information for Multiple Petitions IPR2015-00356


Takeaway: Merely suggesting a range of possible implementations without clearly demonstrating specific differences between the art and the claims and how and why one of ordinary skill would have bridged them does not render one implementation obvious in view of another.

In its Decision, the Board denied institution of inter partes review (IPR) of claims 1-5, 8, 9, 15-19, 22, 23, 26-30, 33, and 34 of the ’053 patent. The ’053 patent relates to digital rights management (DRM). In particular, it addresses the problem of downstream distribution by providing “meta-rights” that have the ability to create other user rights. Continue reading