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

To Redact An Entire Exhibit Board Expects A Specific Discussion Of Why Each Subpart Is Confidential IPR2016-00118


Takeaway: If parties intend to redact the entirety of an exhibit, the Board expects a specific discussion of each subpart within the exhibit. A general discussion of the exhibit as a whole is insufficient to establish that the entirety of the exhibit contains confidential information that should be sealed.

In its Order, the Board denied the joint Motion to Seal Exhibits 2007-2011 and Patent Owner’s Preliminary Response. The Board granted Entry of the Protective Order. 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 Concluding Nexus Not Established IPR2014-01102


Takeaway: To prove nexus between an allegedly commercially successful product and a claimed invention, a patent owner relying upon infringement claim charts in a related litigation should provide explanation as to the context of the litigation, such as whether infringement was established or whether the accused infringer agreed to the charge of infringement. Continue reading

Granting Request to Preserve Record Pending Appeal IPR2014-00587, IPR2014-00786


Takeaway: The Board may grant an unopposed motion requesting that sealed records in the proceeding be preserved pending the outcome of a possible appeal.

In its Decision, the Board granted Patent Owner’s unopposed motion “requesting that the records in these proceedings be preserved pending outcome of possible appeal.” The Board ordered “that within ten business days of the conclusion of any appeal proceeding, or if no appeal is taken within ten business days of the expiration of the period to file a notice of appeal, Patent Owner may contact the Board for authorization to file a motion to expunge confidential information” and “that the record shall remain undisturbed” until then. Continue reading

Institution Denied Where Customer Indemnification Insufficient to Establish Standing as Real Party in Interest CBM2015-00134


Takeaway:  Indemnifying customer for alleged patent infringement, without sufficient substantiation, does not make an entity a real party in interest for a transitional proceeding with respect to a covered business method patent.

In its Decision, the Board denied institution of covered business method patent review of seven related cases.  Two Petitioners (AAA and Gerber) had previously “settled with Phoenix Licensing LLC (‘Patent Owner’) and have been terminated from each of the proceedings.”  The Board determined “that Petitioner [Acxiom] has not demonstrated that it has standing to file these Petitions for covered business method review under § 18(a)(1)(B) of AIA and 37 C.F.R. § 42.302.” Continue reading

Final Written Decision Finding Claims Obvious Where Prior Art Combination Results in Performance Loss IPR2014-00697


Takeaway: Modifying a known device, using a known method, to achieve a predictable result is obvious, even if one is willing to accept a known loss in performance others sought to avoid.

In its Final Written Decision, the Board found all challenged claims of the ‘627 patent unpatentable as obvious under 35 U.S.C. § 103. The ‘627 patent “discloses an internally grounded feedthrough filter capacitor assembly used to prevent the passage of externally generated electromagnetic interference (‘EMI’) into an electronic device, such as a cardiac pacemaker.” Continue reading