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

Denying Motion to Exclude Evidence Going to the Weight of Testimony IPR2015-00093


Takeaway: The Board acts like a judge in a bench trial in district court. Therefore, it will not exclude evidence that goes to the weight of the testimony, such as alleged bias, but will consider it in assessing the evidence presented.

In its Decision, the Board denied in part and dismissed in part Petitioner’s Motion to Exclude Evidence. Petitioner moved to exclude as unfairly prejudicial Exhibit 2002, which is a declaration proffered by Patent Owner in support of its arguments that Petitioner did not establish the unpatentability of claims 1-28. Alternatively, Petitioner moved to exclude certain paragraphs of Exhibit 2002 for various other reasons, such as lack of foundation, being related to inadmissible legal issues, improper attorney argument, and lack of relevance. Continue reading

Evidence Supporting Prior Art Status of Reference Permitted with Reply in Final Written Decision Finding Challenged Claims Unpatentable IPR2015-00052


Takeaway: Because the threshold for instituting trial is different than the threshold for proving unpatentability of a claim in trial, a petitioner may be allowed submit evidence supporting the prior art status of a challenged reference in its reply.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that the challenged claims of the ‘944 patent are unpatentable under 35 U.S.C. § 103. The ‘944 patent “relates to backing up and restoring file systems” by “copying information describing changes in the file system since a previous point in time.” Continue reading

Final Written Decision finding Displayed Poster to be a Printed Publication IPR2014-00513


Takeaway: A poster that is displayed may be considered a printed publication where the intended audience of the poster session necessarily includes interested persons of ordinary skill in the art pertinent to the challenged claims.

In its Final Written Decision, the Board found that Petitioner had proven that claim 10 is unpatentable as obvious, but had not proven the unpatentability of claims 17 and 18. The Board also granted Patent Owner’s Motion to Amend and denied its Motion to Exclude Evidence. The ’550 patent “discloses using a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.” Continue reading

Evidence Excluded For Insufficient Evidence To Support A finding That It Is What The Proponent Claims It Is IPR2014-01347


Takeaway: Failure to produce evidence to support a finding that an item is what the proponent claims it is under Federal Rules of Evidence 901(a), will result in the exclusion of the item.

In its Final Written Decision, the Board excluded Goldbeck (Exhibit 1005), which mooted or disposed of all issues in the inter partes review (IPR). The Dissent concluded that Goldbeck is admissible. Continue reading

Motion to Exclude Denied For Not Explaining Adequately Its Objections to the Admissibility IPR2014-01339


Takeaway: A motion to exclude must state why the evidence is inadmissible, identify the corresponding objection in the record, and explain the objection.

In its Final Written Decision, the Board determined that Petitioner has proven by a preponderance of the evidence, that claims 1 and 3-11 of the ’181 patent are unpatentable. The Board had instituted review on the following grounds: (1) claims 1, 3–7, and 9–11 as anticipated under 35 U.S.C. § 102(b) by Di Bernardo, (2) claims 1, 3–7, and 9–11 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Kawabe, and (3) claim 8 as unpatentable under 35 U.S.C. § 103 over Di Bernardo and Lachinski. The Board maintained its construction for the term “geographic location of interest” as provided in its Decision on Institution. In addition, the Board stated that no patentable weight would be given to the term “server farm,” and that even if it were to accord patentable weight to the term, the broadest reasonable interpretation would be “a group of networked servers.” As for the means plus function interpretation of claims 7-10, the Board declined to adopt Patent Owner’s interpretation that the corresponding structure is only the algorithm provided in the specification. Continue reading

Final Written Decision finding Four-Month Period of Inactivity Sufficient to Defeat Patent Owner’s Claim of Diligence IPR2014-01209


Takeaway: Arguments that disregard relevant parts of a prior art reference without sufficient explanation as to why a person of ordinary skill would do so may be found to be impermissible hindsight reasoning. Continue reading

Final Written Decision Finding All Challenged Claims Unpatentable IPR2014-01196


Takeaway: Decisions on patentability in an ITC proceeding have no bearing on the decision in an IPR, because the decision are based on different evidentiary standards (clear and convincing evidence in the ITC v preponderance of the evidence in an IPR).

In its Final Written Decision, the Board concluded that all of the challenged claims 1-7 of the ’453 patent were unpatentable. Moreover, the Board dismissed Petitioner’s Motion to Exclude Evidence as moot. 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

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