Termination of Proceedings CBM2014-00072-75

LinkedInTwitterFacebookGoogle+Share

Takeaway: The bar under 35 U.S.C. § 325(a)(1) is a statutory requirement and, thus, cannot be waived.

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

Denying Authorization for Motion to Vacate Final Written Decision CBM2013-00024

Takeaway: If a final written decision has already been rendered finding all challenged claims unpatentable, it is unlikely that the Board will vacate the decision on the basis of a subsequent settlement by the parties.

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

Takeaway: The Board may decline a Petitioner’s request to terminate proceedings in the absence of mutual agreement between the parties or the absence of the Board’s inability to determine obviousness.

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

Takeaway: A joint motion to terminate the proceedings must be accompanied by a true, un-redacted copy of the settlement agreement between the parties.

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

Takeaway: The Board will likely allow concurrent ex parte reexamination and IPR proceedings. However, the CRU will likely find no SNQ if based on same references in the petition for the IPR.

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