In Seoul Semiconductor Co., Ltd. v. Enplas Corporation, IPR2014-00605, Paper 13 (October 16, 2014), the Board authorized the Patent Owner to move for additional discovery about testing that Petitioner conducted . The Board noted that “[u]nder 37 C.F.R. § 42.65(b), If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining: (1) Why the test or data is being used; (2) How the test was performed and the data was generated; (3) How the data is used to determine a value; (4) How the test is regarded in the relevant art; and (5) Any other information necessary for the Board to evaluate the test and data.” The Board settled the other discovery issues as it usually does, suggesting that the parties cooperate and authorizing the patent owner to again request permission to file another request for additional discovery.
Author Archives: Bryan Wheelock
October 16, 2014
Institution Decisions
In United States Endoscopy Group, Inc. v. CDx Diagnostics, Inc., IPR2014-00642, Paper 7 (October 16, 2014), the Board instituted inter partes review of claims 1-39 of U.S. Patent No. 6,258,044 (all of the challenged claims).
In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00661, Paper 9 (October 16, 2014), the Board instituted inter partes review of claims 1, 3, 4, 6, 11, 13, 14, 16, 18, and 20 of U.S. Patent No. 7,735,932 (but not challenged claim 7).
In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.
In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims 19–24 (all of the challenged claims) of U.S. Patent No. 7,604,716.
In United States Postal Service v. Return Mail, Inc., CBM2014-00116, Paper 11 (October 16, 2014), the Board instituted covered business method review of claims 39–44 (all of the challenge claims) of U.S. Patent No. 6,826,548.
Dispositions
In Trulia, Inc. v. Zillow, Inc., CBM2013-00056, Paper 44 (October 16. 2014), the Board terminated the covered business method review on the joint motion of the parties.
Joinder Motions
In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00807.
In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00808.
Rehearing
In Travelocity.com LP v. Cronos Technologies LLC, CBM2014-00082, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute covered business method review.
In Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute inter partes review.
Board Gives Refresher Course on Objecting to Evidence
In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 17, )October 15, 2014), the Board gave a refresher course on objecting to evidence supporting a Petition. The Board explained:
Following institution of an inter partes review trial, “[a]ny objection to evidence submitted during a preliminary proceeding must be served within ten business days of the institution of the trial.” 37 C.F.R. § 42.64(b)(1) (emphasis added).
The Board further explained that:
37 C.F.R. § 42.64(b)(2) provides that “[t]he party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.” (emphasis added).
The Board’s Rules do not require the parties to file objections to evidence with the Board. SIPNet EU SRO v. Straight Path IP Group, Inc., IPR2013-00246, Paper 28 at 3 (December 12, 2013). The Board said that objections, and any supplemental evidence served in response, are only to be filed with the Board in the event they later become the basis of a Motion to Exclude Evidence. Sealed Air Corp. v. Pregis Innovative Packaging, Inc., IPR2013-00554, Paper 18 at 2–3 (April 1, 2014).
October 15, 2014
Institution Decisions
In Microsoft Corporation v. VirnetX, Inc., IPR2014-00610, Paper 9 (October 15, 2014) the Board instituted inter partes review of claims 1, 2, 6–8, and 12–14 of U.S. Patent No. 7,490,151.
In Microsoft Corporation v. VirnetX, Inc., IPR2014-00615, Paper 9, Case IPR2014-00612, Patent No. 9, IPR2014-00613, Paper 9, and IPR2014-00614, Paper 9, (October 15, 2014), the Board instituted inter partes review of claims 1, 2, 6, 14–17, 19–23, 26–41, 43–47, and 50–60 of U.S. Patent No. 7,418,504 (all of the challenged claims) and consolidated those proceedings.
In Microsoft Corporation v. VirnetX, Inc., IPR2014-00615, Paper 9, Case IPR2014-00616, Patent No. 9, IPR2014-00618, (October 15, 2014) the Board denied inter partes review of 1, 2, 6, 14–17, 19–23, 26–41, 43–47, and 50– 60 of U.S. Patent No. 7,921,211 (43 claims) in IPR2014-00616. but instituted inter partes review in IPR2014-00615 and IPR2014-00618, and consolidated those proceedings.
In Ford Motor Company v. Vehicle Operation Technologies, LLC., IPR2014-00594, Paper 26 (October 15, 2014), the Board instituted inter partes review of claims of claims 1–15, 21–28, and 41–44of U.S. Patent No. 7,145,442 (all 27 of the challenged claims).
In Ford Motor Company v. Vehicle Operation Technologies, LLC., IPR2014-00600, Paper 26 (October 15, 2014), the Board instituted inter partes review of claims of claims 1–15, 21, 22, 24–28, and 41–44 of U.S. Patent No. 7,145,442 (all 36 of the challenged claims).
In BMW North America, LLC v. Vehicle Operation Technologies, LLC., IPR2014-00601, Paper 26 (October 15, 2014), the Board instituted inter partes review of claims of claims 1–15, 21, 22, 24–28, and 41–44 of U.S. Patent No. 7,145,442 (all 36 of the challenged claims).
In BMW North America, LLC v. Vehicle Operation Technologies, LLC., IPR2014-00602, Paper 26 (October 15, 2014), the Board instituted inter partes review of claims of claims 1–15, 21, 22, 24–28, and 41–44 of U.S. Patent No. 7,145,442 (all 36 of the challenged claims).
In BMW North America, LLC v. Vehicle Operation Technologies, LLC., IPR2014-00603, Paper 30 (October 15, 2014), the Board instituted inter partes review of claims 1–15, 21–28, and 41–44 of U.S. Patent No. 7,145,442 (all 27 of the challenged claims).
In The Gillette Company v. Zond LLC, IPR2014-00604, Paper 9 (October 15, 2014), the Board instituted inter partes review of claims 30–37 of U.S. Patent No. 6,896,775.
In Fujitsu Semiconductor Limited v. Zond LLC, IPR2014-00846, Paper 12 (October 15, 2014) the Board instituted inter partes review of claims 14–18 and 25–32 (all the challenged claims) of U.S. Patent No. 7,604,716.
In Fujitsu Semiconductor Limited v. Zond LLC, IPR2014-00849, Paper 11 (October 15, 2014) the Board instituted inter partes review of claims 19–24 (all the challenged claims) of U.S. Patent No. 7,604,716.
In Taiwan Semiconductor Manufacturing Company, Ltd. v. Zond LLC, IPR2014-00807, Paper 10 (October 15, 2014) the Board instituted inter partes review of claims 14–18 and 25–32 (all the challenged claims) of U.S. Patent No. 7,604,716.
In Taiwan Semiconductor Manufacturing Company, Ltd. v. Zond LLC, IPR2014-00808, Paper 9 (October 15, 2014) the Board instituted inter partes review of claims 19–24 (“the challenged claims”) of U.S. Patent No. 7,604,716.
In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00667, Paper 7 (October 15, 2014), the Board instituted inter partes review of claims 1–6 (all of the challenged claims) of U.S. Patent No. 7,637,573.
Joinder
In Fujitsu Semiconductor Limited v. Zond LLC, IPR2014-00846, Paper 12 (October 15, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00808.
In Fujitsu Semiconductor Limited v. Zond LLC, IPR2014-00849, Paper 12 (October 15, 2014), the Board granted petitioner’s motion to join the proceeding with IPR2014-00807.
Rehearing
Catapult Innovations Pty Ltd. v. adidas AG, DER2014-00005, Paper 15, DER2014-00006, Paper 21 (October 15, 2014), the Board denied rehearing of the Board’s decision denying institution of a derivation proceeding.
Keep Your Objections to Yourself (or at least Don’t Share Them with the Board)
When a patent owner objects to the evidence submitted by the Petitioner, the Patent owner should serve (but not file) objections within ten days of the institution of the proceeding. 37 C.F.R. § 42.64(b)(1). In SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 15, IPR2014-00680, Paper 15 (October 15, 2014) the Board reminded the patent owner of this fact, expunging the objects filed by the patent owner. The Board explained:
The Board’s Rules do not require, nor have we authorized, the parties to file objections to evidence with the Board. See SIPNet EU SRO v. Straight Path IP Group, Inc., Case No. 2013-00246, slip op. 3 (PTAB Dec. 12, 2013) (Paper 28). Such objections, and any supplemental evidence served in response, are only to be filed with the Board in the event they later become the basis of a Motion to Exclude Evidence. See Sealed Air Corp. v. Pregis Innovative Packaging, Inc., Case IPR2013-00554, slip op. 2–3 (PTAB Apr. 1, 2014) (Paper 18).
Observations on Motions for Observation
The only way for patent owner to respond to testimony presented in a petitioner’s reply is through a Motion for Observations. A motion for observation on cross-examination is a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness. The observation must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit (including another part of the same testimony). In Medtronic, Inc. v. NuVasive, Inc., IPR2013-00507, Paper 33, IPR2013-00508, Paper 37, (October 15, 2014), the Board found that the motions for observations filed by patent owner “contain arguments and are excessively long, and, thus, improper.” The Board expunged the Motions, but graciously allowed patent owner a chance to file corrected Motions.
Rehearing Denied in Three Derivation Proceedings
In Catapult Innovations Pty Ltd. v. adidas AG, DER2014-00002, Paper 21, DER2014-00005, Paper 15 and DER2014-00006, Paper 15 (October 15, 2014), the Board denied rehearing of the Board’s decision denying institution of the first three derivation proceedings filed.
We will have to wait longer for the first derivation proceeding to be instituted.
October 14, 2014
Institution Decisions
In Butamax(TM) Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00581, Paper 8 (October 14. 2014), the Board denied inter partes review of claims 5 and 10 of U.S. Patent No. 8,273,565, and further denied joinder with a prior proceeding.
Dispositions
In Microsoft Corporation v. Surfcast, Inc., IPR2013-00292, IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper 33 (October 14, 2014), the Board issue a final written decision finding that claims 1–52 (all of the challenged claims) of U.S. Patent No. 6,724,403 were unpatentable.
If at First You Don’t Succeed, Don’t Try, Try, Again
It is common for petitioners to file multiple petitions challenging a patent. The chief advantage of this strategy is an additional 60 pages of argument for each additional petition filed. Sometimes, however, the petitioner will follow up with a second petition to mop up the claims it “missed” in an earlier petition. The Board has been increasingly sensitive to this, finding that it is really just an improper request for rehearing of a question already decided. This was the case in Butamax(TM) Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00581, Paper 9 (October 14, 2014), where the Board denied Butamax’s petition calling it “an attempt to request rehearing of a prior decision instituting trial, outside the time period provided in our Rules for such requests” and citing Microsoft Corp. v. Enfish, LLC, Case IPR2014-00577, slip op. at 8 (PTAB Sept. 29, 2014) (Paper 12) (denying second petition that is “essentially a rehearing request”).
If It’s Not One Thing, It’s Another
In Searchmetrics, Inc. Brightedge Technologies, Inc., IPR2014-01517, Paper 3 (October 6, 2014), the Board gave the petition a filing date, but required petitioner to resubmit an exhibit with the proper label. The Board continues to be very particular.