Author Archives: Bryan Wheelock

About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.

September 30, 2014

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Institution Decisions

In Apple Inc. v. Smartflash LLC, CBM2014-00102, Paper 8, CBM2014-00103, Paper 8, (September 30, 2014) the Board instituted a covered business method review of claims 1, 2, and 11-14 of U.S. Patent No. 8,118,221 (but not challenged claim 32).  The Board then consolidated the two proceedings under CBM2014-00102.

In Apple Inc. v. Smartflash LLC, CBM2014-00104, Paper 9, CBM2014-00105, Paper 9, the Board denied covered business method review of  claims 1, 3, 11, and 13–15 (“the challenged claims”) of U.S. Patent No. 7,334,720.

In Apple Inc. v. Smartflash LLC, CBM2014-00106, Paper 8, CBM2014-00107, Paper 8, (September 30, 2014), the Board instituted a covered business method review of claim 1, of U.S. Patent No. 8,033,458 (but not challenged claim 6–8, 10, and 11).  The Board then consolidated the two proceedings under CBM2014-00106.

In Apple Inc. v. Smartflash LLC, CBM2014-00108, Paper 8, CBM2014-00109, Paper 8, (September 30, 2014), the Board instituted a covered business method review of claim 26 of U.S. Patent No. 8,061,598 (but not challenged claim 1, 2, 7, 13, 15, and 31 ).  The Board then consolidated the two proceedings under CBM2014-00108.

In Apple Inc. v. Smartflash LLC, CBM2014-00112, Paper 7, CBM2014-00113, Paper 7, (September 30, 2014), the Board instituted a covered business method review of claims 1, 6–8, 12, 13, 16, and 18 of U.S. Patent No. 7,942,317 (but not challenged claim 14).  The Board then consolidated the two proceedings under CBM2014-00112.

In IGB Automotive Ltd. v, Gentherm GmbH,  IPR2014-00666, Paper 7, (September 30, 2014), the Board instituted inter partes review of claims 1-7 of U.S. Patent No. 7,229,129 (but not challenged claims 8-12).

In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 9, (September 30, 2014), the Board instituted inter partes review of claims 1, 2, 4–10, and 14–19 of U.S. Patent No. 7,997,442 (but not as to challenged claims 3 and 11–13).

In Ford Motor Company v.  Paice LLC, IPR2014-00570, Paper 10, (September 30, 2014), the Board instituted inter partes review of claims 30–33, 35, 36, and 39 of U.S. Patent No. 8,214,097 (but not as to challenged claim 38).

In Ford Motor Company v.  Paice LLC, IPR2014-00571, Paper 12, (September 30, 2014), the Board instituted inter partes review of claims 1, 6, 7, 9, 15, 21, 23, and 36 of U.S. Patent No. 7,104,347 (all of the challenged claims).

In Ford Motor Company v.  Paice LLC, IPR2014-00579, Paper 12, (September 30, 2014), the Board instituted inter partes review of claims 1, 7, 8, 18, 21, 23, and 37 of U.S. Patent No. 7,104,347 (all of the challenged claims).

Board Uses its Discretion to Duck Joinder Question

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In Microsoft Corporation v. Enfish, LLC, IPR2014-00574, Paper 13, IPR2014-00576, Paper 13, IPR2014-00577, Paper 13  (September 29, 2014), the Board denied Microsoft’s request to join the petition, with one of the prior inter partes reviews Microsoft filed against the same patent.  The joinder was essential for the petition to be timely.

Among other things, Enfish argued that joinder was not available because joinder only allows the addition of parties, and Microsoft was already a party.  The Board ducked the question by quoting the statute and concluding that “[T]he standard for joinder gives the Director discretion as to whether to join an inter partes review with another inter partes review. 35 U.S.C. § 315(c)” without expressly dealing with Enfish’s point that the statute explicitly says that parties can be joined, not petitions.  Other panels of the Board have agreed with Enfish.

The Board went on to conclude that Microsoft had not sufficiently shown that joinder was justified, and in its discretion, denied the motion for joinder.

Discretion may be the better part of valor, but here it simply allows the confusion over joinder to continue.

 

September 29, 2014

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Institution Decisions

In Microsoft Corporation v. Enfish, LLC, IPR2014-00577, Paper 13, IPR2014-00574, Paper 14, IPR2014-00576, Paper 13   (September 29, 2014), the Board denied Microsoft’s motion for joinder, and therefore denied Microsoft’s petitions for inter partes review as untimely under 35 USC 315(b).

In Nelson Products, Inc. v. BAL Seal Engineering, Inc., IPR2014-00572, Paper 10 (September 29, 2014), the Board instituted inter partes review of claims 1–16 and 19 of US Patent No. 8,297,662.

In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00530, Paper 8 (September 30,2 014), the Board denied inter partes review of claims 13–22 and 37–45 of U.S. Patent No. 7,921,320. In

September 26, 2014

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New Filings

Nissan North America, Inc., filed IPR2014-01545 challenging U.S. Patent No. 5,629,086, assigned to Sanyo Electric Co., Ltd.

Nissan North America, Inc., filed IPR2014-01546 challenging U.S. Patent No. 6,066,399, assigned to Sanyo Electric Co., Ltd.

Nissan North America, Inc., filed IPR2014-01547 challenging U.S. Patent No. 6,071,103, assigned to Sanyo Electric Co., Ltd.

Institution Decision

In Juniper Networks, Inc. v. Linex Technologies, Inc., IR2014-00595, Paper 19 (September 26, 2014), the Board denied inter partes review of claims 1-29 of U.S. Patent No. 7,167,503 because the challenged claims of the ’503 patent had been amended in a completed ex parte reexamination proceeding.

In Juniper Networks, Inc. v. Linex Technologies, Inc., IR2014-00596, Paper 25 (September 26, 2014), the Board denied inter partes review of claims 4–37 of U.S. Patent No. 6,493,377 because the challenged claims of the ’377 patent had been amended in a completed ex parte reexamination proceeding.

In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00663, Paper 8 (September 26, 2014), the Board instituted inter partes review of claims 1, 3, 5, 11–15, 22, 24–27, and 34–37 of U.S. Patent No. 7,775,602.

 

September 25, 2014

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New Filings

Toledo & Co., Inc., filed IPR2014-01542 challenging U.S. Patent No. 7,516,843, assigned to Master Lock Company, LLC.

Institution Decisions

Stat LLC v. Hockeyline Inc., IPR2014-00510, Paper 12 (September 25, 2014), the Board instituted inter partes review of claims 1, 2, 8, 10-12, and 30 of U.S. Patent No. 6,725,107.

In Target Corporation v. Destination Maternity, IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petition as barred under 35 USC 315(b),finding that Target could not “join” its late filed petition with its prior, timely filed petitions.  The Board found that joinder only allows parties to join, and a party cannot join a proceeding to which it is already a party.

In eBay Inc. v. Advanced Auctions, LLC, IPR2014-00806, Paper 14, the Board denied institution of inter partes review of claims 1-7, 10-15, 17-21, and 23-26 of U.S. Patent No. 8,266,000 as barred under 35 USC 315(b), the Board finding that even though the first suit was dismissed without prejudice, the parties agreed that it would continue in the second suit.

 

Dispositions

In Handi Quilter, Inc. v. Bernina International AG, IPR2013-00363, Paper 39 (September 25, 2014), the Board held that claims 1, 2, 5–7, 10, 12, 13, 17–21, 23–29, 31, 33, and 34 of U.S. Patent No. 6,883,446 were unpatentable, but not challenged claims 3, 4, 8, 9, 11, 14-16, 22, 30, and 32.

In Becton, Dickinson & Company v. One StockDuq Holdings, LLC, IPR2013-00235, Paper 30 (September 25, 2014), the Board held that claims 22–26, 28, 29, and 31 (all of the challenged claims) of U.S. Patent No. 5,704,914, were unpatentable.

 

 

 

 

 

Make That First Bite A Big One — Don’t Count on a Second Petition

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In Medtronic, Inc. v.  Marital Deduction Trust, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417.  The Board noted that joinder was essential because this second IPR was filed more than one year after Medtronic had been served with a complaint for infringement of the ‘417 patent.

The Board said it was not persuaded that Medtronic had shown that joinder is justified in this instance. The Board said that the second petition represents a “second bite at the apple” for Medtronic, who had received the benefit of seeing the Decision to Institute in the prior case involving the same parties and patent claims.  The Board said that this “second bite at the apple” situation is particularly noteworthy in view of the § 315(b) bar at issue here, as well as a difference of opinion that currently exists at the Board as to whether the Board has discretion under 35 U.S.C. § 315(c) to allow joinder of a person to an ongoing inter partes review when that person is already a party to the ongoing inter partes review.

The “controversy” to which the Board referred, it cited its decision in Target Corp. v. Destination Maternity Corp., IPR2014-00508, (September 25, 2014) (Paper 18), where a panel construed the statute as permitting joinder of parties, not joinder of two proceedings by the same party, while in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, (September 2, 2014) (Paper 166), a panel concluded that joinder of proceedings by the same party was appropriate.

The Board noted that to the extent that Medtronic was in a difficult position, it was of its own making, since it delayed filing the second petition.

 

 

 

The Board’s Disjointed View of Joinder

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In Target Corporation v. Destination Maternity, IPR2014-00508, Paper 20 IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petitions as barred under 35 USC 315(b),finding that Target could not “join” its later filed petitions with its prior, timely filed petitions.  The Board found that joinder only allows parties to join, and a party cannot join a proceeding to which it is already a party.  The Board separately denied Target motion for joinder in IPR2014-00508, Paper 18, IPR2014-00509, Paper 18.

The Board provided a detailed analysis of Joinder under 35 U.S.C. 315(c), acknowledging prior decisions of the Board that reached a different result, allowing a party to “join itself” in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (September 2, 2014) (Paper 66); Samsung Elecs. Co. v. Virgina Innovation Scis., Inc., IPR2014-00557 (June 13, 2014); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Feb. 25, 2013) (Paper 15); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286 (August 9, 2013) (Paper 14); Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00327 (September 24, 2013) (Paper 15).

September 24, 2014

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Institution Decisions

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 13 (September 24, 2014), the Board instituted inter partes review of claim 1 (the only claim) of U.S. Patent No. 6,826,694.

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Tela Innovations. Inc., IPR2014-00094, the Board granted the joint motion of the parties to terminate the proceeding.

In EBAY Inc.v. Moneycat Ltd., CBM2014-00091, Paper 12 (September 24, 2014), the Board instituted a covered business method review of claims 1, 2, 4–8, 10, and 11 of U.S. Patent No. 8,051,011 (all of the challenged claims).

In EBAY Inc.v. Moneycat Ltd., CBM2014-00092, Paper 12 (September 24, 2014), the Board instituted a covered business method review of claims 1, 2, and 4–11 of U.S. Patent No. 7,590,602 (all of the challenged claims).

In EBAY Inc.v. Moneycat Ltd., CBM2014-00093, Paper 14 (September 24, 2014), the Board instituted a covered business method review of claims 1–3, 5–11, and 13–23 of U.S. Patent No. 8,195,578 (but not as to challenged claims 4 and 12).

Dispositions

In Pentair Ltd. v. Hayward Industries, Inc., IPR2014-00187, Paper 21 (September 24, 2014), the Board entered final decision on the patent owner motion that claims 1, 2, and 9 of U.S. Patent No. 8,281,425 were unpatentable.

 

 

September 23, 2014

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Institution Decisions

In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 (September 23, 2014) the Board denied inter partes review of claims 13–24 and 37–47 of U.S. Patent No. 7,921,320.

In Samsung Electronics Co., Ltd. v.  Rembrandt Wireless Technologies, LP, IPR2014-00518, Paper 16 (September 23, 2014), the Board granted inter partes review of claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, and 76–79 of U.S. Patent No. 8,023,580, but not as to challenged claims 2, 19, 49, 52, 53, and 59.

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Dispositions

In Butamax(TM) Advanced Biofuels LLC v. Gevo, Inc, IPR2013-00214, Paper 46 (September 23, 2014) the Board issued a final written decision that claims 1–28 (all of the challenged claims) of U.S. Patent No. 8,304,588 are unpatentable.

Clerical Errors Forgiven

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In SCHOTT Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 30 (September 22, 2014), the Board forgave a clerical error that resulted in the petitioner’s expert declaration not being filed until January 21, and accorded the Petition a filing date of January 18, when the rest of Petitioner’s papers were filed.  The Board was satisfied that the delay was the result of a clerical error, and noted that similar clerical errors had been forgiven in the past, citing Conmed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624 (February 21, 2014) (Paper 18); Syntroleum Corp. v. Neste Oil Oyj, IPR2013-00178 (July 22, 2013) (Paper 21); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00063, (January 16, 2013) (Paper 21).