In its Decision, the Board ordered the termination of the trials in CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-00075, and vacated its Decisions on Institution in each of these proceedings, because it found that Petitioner had filed a declaratory judgment action that resulted in a bar under 35 U.S.C. § 325(a)(1). Continue reading
Category Archives: Terminate Proceeding
Denying Authorization for Motion to Vacate Final Written Decision CBM2013-00024
In its Order, the Board denied Patent Owner’s request for authorization to file a Motion to Vacate the Final Written Decision and to Terminate the Proceeding After the Final Written Decision Has Been Vacated. The Board rendered a Final Written Decision finding unpatentable all challenged claims of the ’413 Patent. Subsequently, the parties filed a Joint Motion to File Settlement Agreement as Confidential Business Information, and Patent Owner requested authorization to file the Motion to Vacate. Patent Owner based its request on the fact that Petitioner has abandoned the proceeding by agreeing not to participate in any subsequent appeal. Continue reading
Denying Petitioner’s Motion to Terminate IPR2014-00037
In its Decision, the Board denied Petitioner’s Motion to Terminate because Petitioner had not identified any precedent for terminating proceedings without issuing a final written decision under circumstances other than mutual agreement between the parties or an inability of the Board to determine obviousness. Neither condition was present in the current proceeding. Continue reading
Order Denying Motions to Terminate IPR2014-00132, 00133
In its Order, the Board denied without prejudice the parties’ Motions to Terminate the Proceedings pursuant to a settlement for failing to include all the information that must accompany such motions. Continue reading
Order Denying Motion to Terminate Ex Parte Reexamination IPR2013-00289
In its Order, the Board denied Petitioner’s Motion to Terminate, or alternatively stay, ex parte reexamination no. 90/013,148, in which Patent Owner had requested to amend the claims at issue in this proceeding. Petitioner argued that Patent Owner’s pursuit of amendments in the ex parte reexamination is inconsistent with Congress’s intent that the IPR tackle all issues at once and is also inconsistent with the Board’s guidance that ex parte reexamination is for structural changes to the claims. The Board was not persuaded by these arguments and instead found that the AIA does not prohibit Patent Owners from amending its claims by other means. Further, it agreed with Patent Owner that its pursuit of amendments in ex parte reexamination is not inconsistent with the guidance in this proceeding, and the Board did not restrict amendment via ex parte reexamination to complete restructuring of claim structure. The Board requested that Patent Owner notify the Board as soon as possible whenever the status of the ex parte reexamination changes. Continue reading
Order Terminating Proceeding Based on Indefiniteness IPR2013-00036
Takeaway: The Board will assess indefiniteness in an IPR to the extent it cannot determine a claim construction. This includes whether the specification provides sufficient corresponding structure for a means-plus-function element, such as a specific algorithm for any computer-implemented means-plus-function element.
In this Order, the Board terminated the proceeding without ever reaching the question of patentability based on the cited prior art. Instead, the Board found the claims to be indefinite, which prevented it from conducting the proper analysis. Continue reading