Denying Institution Because Patent Ineligible for CBM Review CBM2015-00109; CBM2015-00149


Takeaway: The Board refused to allow the parties to file a motion to terminate the proceeding without a written settlement of the dispute.

In its Decision, the Board declined institution of covered business method patent review in either CBM2015-00109 or CBM2015-00149 as to any of the challenged claims (1-26) of the ’074 Patent. The ’074 Patent relates to “a ‘unified messaging service’ that allows a user to access communications such as e-mail and voice mail using ‘a single point of access to all communications, integrated with personal information management tools and customized public content delivery.’” Continue reading

Final Written Decision Finding Evidence of “Printed Publication” Insufficient IPR2014-00690


Takeaway: A declaration used as evidence of a document being a “printed publication” should be precise and be accompanied by corroborating evidence of public accessibility, and not bare statements by the declarant.

In its Final Written Decision, the Board denied the parties Renewed Joint Motion to Terminate Proceedings and found that Petitioner had not shown by a preponderance of the evidence that the instituted claims 4-6, 8-20, or 23-29 are unpatentable. The ’275 patent “discloses a single wire serial interface for managing functions such as power level and on and off switching for power integrated circuits and other devices.” Continue reading

Terminating Proceeding After Finding that Petitioner Could Have Raised Argument in a Prior Proceeding IPR2014-01465


Takeaway: In determining whether a ground reasonably could have been raised in an earlier proceeding and the petitioner is estopped from asserting that ground, the Board does not look to whether the petitioner had knowledge of the prior art, but rather whether that prior art could have been discovered by a skilled searcher doing a diligent prior art search. 

In its Order, the Board granted Patent Owner’s Motion to Terminate the Inter Partes Review. Patent Owner sought termination because on September 23, 2015, a final written decision was issued pursuant to 35 U.S.C. § 318(a) in International Business Machines Corp. v. Intellectual Ventures II, LLC, IPR2014-00587 (“the prior proceeding”). Patent Owner argued that Petitioner is estopped from maintaining this proceeding pursuant to § 315(e)(1) because Petitioner reasonably could have raised the sole ground of this proceeding during the prior proceeding. In both proceedings, Petitioner challenged the sole claim of the ’694 Patent. Petitioner argued that the sole ground in this proceeding could not have been reasonably raised in the prior proceeding, and that even if Petitioner is estopped, the proceeding should not be terminated and should continue without a petitioner.  Continue reading

Dismissing Petitioner Due to the Board Finding Estoppel under Section 325(e)(1) CBM2015-00015


Takeaway: For purposes of estoppel under Section 325(e)(1), a ground of unpatentability still reasonably could have been raised in an earlier proceeding even if intervening case law clarifying jurisprudence becomes available.

In its Order, the Board addressed the question of whether Petitioner Apple “is estopped from arguing the unpatentability of claim 1 of the ’221 patent and claim 1 of the ’458 patent pursuant to 35 U.S.C. § 101 at the November 9th hearing,” ultimately concluding that estoppel was applicable. The Board had previously found both claims to be unpatentable under 35 U.S.C. § 103 in final written decisions issued in related proceedings.

Pursuant to 35 U.S.C. § 325(e)(1):

[t]he petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a) or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

Petitioner argued that estoppel does not apply because the instant unpatentability grounds based on Section 101 could not have been “reasonably” raised because the seminal Alice Supreme Court case did not exist at the time of the earlier CBM Petitions. Moreover, Petitioner asserted that the Board treated CBM proceedings differently pre and post the Alice decision. Patent Owner disagreed and argued that estoppel should apply despite Alice not having been decided.

The Board agreed with Patent Owner. In particular, the Board stressed that Section 325(e)(1) prohibits “any ground” raised or that reasonably could have been raised. “This statutory provision does not make exceptions for intervening case law that merely clarifies jurisprudence.” The Board also noted that although Alice had not been decided, several Supreme Court and Federal Circuit decisions had already been decided regarding patent eligibility of computer-based methods. Thus, the Board concluded that Petitioner reasonably could have raised Section 101 challenges in the previous CBM proceedings.

Petitioner further argued that the statutory language “maintain a proceeding” requires active participation “while the evidentiary record remains open.” Because the evidentiary records of the instant proceedings were closed, Petitioner asserted that it would not be maintaining a proceeding by merely participating in oral argument. The Board was not persuaded, holding that “presenting argument at the hearing with respect to the claims at issue” constitutes maintaining a proceeding according to the statute.

Thus, the Board held that Petitioner Apple could not present arguments with respect to the patentability of claim 1 of the ’221 patent and claim 1 of the ’458 patent at the oral hearing, and dismissed Apple as a petitioner from CBM2015-00015 and CBM2015-00016 with respect to claim 1 of the ’458 patent. In a footnote, the Board addressed Apple’s request to be terminated from the current proceeding to make clear that litigation estoppel does not apply. The Board noted that because Apple was being dismissed from CBM2015-00015 and CBM2015-00016, it would “no longer be a petitioner in these cases.”

Finally, the Board denied Patent Owner’s request to file a Motion to Terminate two proceedings in light of the estoppel findings. In particular, the Board noted that while Section 325(e)(1) addresses actions that may be taken by a petition, the section “does not proscribe actions that [the Board] may take.” Moreover, the Board noted that the record was fully developed and that “[a]dministrative resources will be conserved by resolving all the similar issues at once.”

Apple Inc. v. Smartflash LLC, CBM2015-00015 (Paper 49), CBM2015-00016 (Paper 50), CBM2015-00018 (Paper 37), CBM2014-00194 (Paper 46)
Order on Conduct of the Proceedings Dated: November 4, 2015
Patents: 8,118,221 B2; 8,033,458 B2; 7,942,317 B2
Before: Jennifer S. Bisk, Rama G. Elluru, Jeremy M. Plenzler, and Matthew R. Clements
Written by: Elluru
Related Proceedings: Re-examination Control No. 90/013,385

Proceedings Not Terminated After Federal Circuit Appeal Dismissed CBM2015-00022


Takeaway: If claims in an instituted trial are held unpatentable in a co-pending district court case and the patent owner dismisses its appeal after the Board institutes trial, the Board is not required to terminate its own proceedings.

In its Final Written Decision, the Board determined that all challenged claims (claims 8-12) of U.S. Patent No. 8,301,466 are unpatentable under 35 U.S.C. § 101. The ’466 patent relates to “providing a method for consumers to request their medical records from health care providers and store their medical records for online access.”

Continue reading

Conduct of the Proceeding IPR2014-01002


Takeaway: The Board will not enter adverse judgment against a patent owner who cancels the challenged claims in a co-pending reexamination proceeding before a reexamination certificate is issued and the time to appeal has expired.

In its Decision, the Board declined to enter adverse judgment against Patent Owner under § 42.73(b)(2) and also determined that, under the circumstances presented, termination of the proceeding without a final written decision (as requested by Patent Owner) was not appropriate.

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Denying Authorization to File Motion to Terminate Asserting Lack of Case or Controversy Standing CBM2014-00176


Takeaway: Standing to file a CBM proceeding is evaluated at the time of the filing of the Petition, and does not require article III standing to be maintained throughout the proceeding.

In its Decision, the Board ordered that Patent Owner is not authorized to file a motion to terminate. A conference call was held, where Patent Owner sought authorization to file a motion to terminate the CBM proceeding based on a lack or case or controversy between the parties. Continue reading

Denying Authorization to Terminate Proceeding in Petitioner’s Effort to Avoid Estoppel IPR2015-00035


Takeaway: A petitioner may seek to request judgment against itself at any time without Board authorization; however, Board authorization is required if a petitioner further seeks to terminate the proceeding without a final written decision and its accompanying estoppel effects.

In its Decision, the Board denied Petitioner’s Request for Authorization to File a Motion to Terminate trial without a final written decision. Petitioner “sought authorization to file a motion to terminate trial that would result in a judgment without a final written decision.” Petitioner sought an adverse judgment “due to Petitioner’s abandonment of the contest under 37 C.F.R. § 42.73(b)(4), but [also] sought to avoid the estoppel effects of a final written decision.” Patent Owner opposed. Continue reading

Terminating Proceedings IPR2014-00041, 43, 51, 55, 55


Takeaway: Where a real party-in-interest is not provided in the petition, the Board is not allowed to consider the petition, and any correction of the real party-in-interest will likely result in a new filing date as of the date the correction is made. This can result in the petition being time-barred.  

In the Decision, the Board granted Patent Owner’s motions addressing (1) whether Petitioner had identified all real-parties-in-interest (“RPIs”) in its Petitions, and (2) what relief should be granted if Petitioner failed to identify all RPIs in its Petitions, and thus vacated its decisions on institution in each of the five cases and terminated each of the proceedings. Continue reading

Denying Motion to Terminate IPR2014-00220, 221, 222, 227


Takeaway: Although a change to the list of real-parties-in-interest on record should be filed via an Updated Mandatory Notice within 21 days of the effective date of the change, the Board may excuse lateness of this type of submission if the interests of justice so require.

In its Decision, the Board denied Patent Owner’s Motion to Terminate. Patent Owner had argued that the failure by Petitioner to timely identify Valeo North America, Inc. as a real-party-in-interest warranted termination of the proceedings; but the Board disagreed. Continue reading