In its Decision, the Board authorized Petitioner to file a non-argumentative claim chart showing where written description support for the claims of a cited prior art reference could be found in a related provisional patent application and authorized Patent Owner to file a response to Petitioner’s claim chart.
Category Archives: Priority
Institution Denied Where Petitioner Impermissibly Relied Upon the Teachings of the Challenged Patent IPR2015-00802
In its Decision, the Board denied institution of inter partes review of claims 1-4 of the ‘285 patent because Petitioner had not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim. The ‘285 patent “is directed to drug dosage forms that have a coordinated release of an agent that raises the pH of a patient’s gastrointestinal tract to a safe level, followed by a non-steroidal anti-inflammatory drug (‘NSAID’), to reduce unwanted gastrointestinal side effects.” Continue reading
Benefit from Earlier Filing Date Results in Denial of Institution IPR2015-00918
In its Decision, the Board did not institute inter partes review of claims 1-20 of the ‘563 patent because the allegedly anticipating KenKnight ‘967 reference was not prior art. The ‘563 patent “relates to an implantable system for the antitachycardia pacing of the heart of a patient in need of such treatment.” As an initial matter, the Board found that “none of the terms in the challenged claims requires express construction at this time.” Continue reading
Decision Denying Request for Rehearing IPR2014-01457
Microsoft Corporation v. Biscotti Inc.
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying Petitioner’s challenge of claims 13-16, 29, 31-34, 36, and 82-86 as obvious over Kenoyer and the HDMI Specification. Upon a request for rehearing, the decision on a petition is reviewed for an abuse of discretion. The party requesting rehearing “must identify, specifically, all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously.” Continue reading
Granting Request for Rehearing Based Upon Showing That Secondary Ground Would Defeat Swear-Behind Defense IPR2014-01448
Takeaway: The Board granted rehearing of a decision declining to institute an obviousness ground because although it is arguably weaker substantively, it would avoid a swear-behind defense on which the arguably stronger ground was subjected.
In its Decision, the Board granted the rehearing in part, so as to institute an inter partes review of claims 1 and 7 of the ’279 Patent based on obviousness over He and Korodi. However, the Board continued to decline to institute the other obviousness ground asserted in the Petition. In its Decision on Institution, the Board had instituted review of claims 1 and 7 under 35 U.S.C. § 103 in view of Gustafsson and He; declined institution of an anticipation ground based on Naghi; and declined institution of an obviousness ground over He and Korodi or Currie (“Assertion 2”), because Petitioner did not explain adequately the relative strengths and weaknesses of its asserted grounds. Continue reading
Decision Denying Institution IPR2015-00413
Apple Inc. v. E-Watch, Inc.
In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims, claims 1-3, 5-7, 12, and 14. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” Continue reading
Final Written Decision IPR2014-00073
Finding All Instituted Claims Unpatentable
In its Final Written Decision, the Board held that Petitioner demonstrated by a preponderance of the evidence that all of the instituted claims, claims 21, 22, 24, 30, and 33-37, of the ’356 patent are unpatentable based on some, but not all, of the grounds upon which trial was instituted. The Petition also challenged claims 25 and 26, but no grounds on those claims were instituted. The ’356 patent generally relates to “methods and apparatuses for accessing a surgical target site, such as the lumbar spine, using minimally invasive techniques.” Continue reading
Decision Denying Institution IPR2015-00411
Apple Inc. v. E-Watch, Inc.
In its Decision, the Board denied institution of inter partes review of the ’871 Patent because Petitioner did not demonstrate a reasonable likelihood of prevailing in showing the unpatentability of any of the challenged claims. The ’871 Patent generally relates to “image capture and transmission systems and is specifically directed to an image capture, compression, and transmission system for use in connection with land line and wireless telephone systems.” Continue reading
Denying Institution IPR2015-00153
In its Decision on Institution, the Board denied the Petition challenging claims 1-23 of the ’021 patent. According to the Board, Petitioner had not demonstrated a reasonable likelihood of prevailing on its challenge with respect to these claims. Continue reading
Decision Denying Institution IPR2015-00060
In its Decision on Institution, the Board found that Petitioner had not established a reasonable likelihood of prevailing on any of the challenged claims, claims 1, 8, 10, 18, 19, and 22, of the ’032 Patent. The ’032 Patent describes an encoding/decoding scheme. In particular, the ’032 Patent describes the serial concatenation of interleaved convolutional codes forming turbo-like codes. Continue reading