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.

Board Consolidates IPR’s of Two Different (But Related) Patents

Posted on by

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 10 (September 5, 2014), the Board consolited two inter partes reviews directed to different but related patents. In IPR2014-00411 inter partes review was instituted as to claims 1-22, 31, 37-40, 42-56, and 58 of Patent No.8,426,813. In IPR2014-00434 inter partes review was been instituted as to claims 1-7 and 9-20 of Patent No. 8,193,496.

The Board noted that the claimed invention of the ’813 patent is to an apparatus and the claimed invention of the ’496 patent is to a method of using the apparatus, and the disclosure of the ʼ813 patent and the disclosure of the ʼ496 patent are essentially identical.  The Petitioner’s witness in both IPRs is the same and his Declaration testimony overlaps considerably.  The testimony of any additional witness in both IPRs is expected in large measure to overlap.  The Board concluded that in order to secure a just, speedy, and inexpensive resolution of both proceedings, 37 C.F.R. § 42.1(b), and in view of some common issues in both IPRs, trial in IPR ʼ411 and the trial in IPR ʼ434 will be consolidated. 37 C.F.R. § 42.5(a).

 

No Right to Cross-Examine a Declarant Not Under the Proponent’s Control

Posted on by

In Mexichem Amanco Holding S.A. de C.V. v.Honeywell International, Inc., IPR2013-00576, Paper 36 (September 5, 2014), the Board denied patent owner’s request for additional discovery — the deposition of Dr. Takashi Shibanuma, who provided previously prepared testimony relied on by Petitioner in its Reply to Patent Owner’s Response.  This previously prepared testimony was a declaration originally submitted in reexaminations of a different, but related, patent.  The Board denied the additional discovery relying on the Fifth Garmin Factor — that the request is not overly burdensome to answer.  The Board said that it wold not compel petitioner to provide Dr. Shibanuma for cross-examination in a deposition, noting that the witness was not under Petitioner’s control, and may reside in Japan, and that such such action may require a court subpoena and/or invoke the Hague Convention.

 

September 4, 2014

Posted on by

Institution Decisions

In Fiserv, Inc. v. DataTreasury Corporation, CBM2014-00087, Paper 6 (September 4, 2014), the Board instituted a covered business method review of claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–42, 45–49, 55, 58–60, 64, 66–70, 73–75, 78, 80, 82–84, 88–91, 102, 105–110, and 114–123 of U.S. Patent No. 5,910,988, but not 3-7, 9-15, 1719-21, 23-24, 27, 30-35, 37, 43-44, 50-54, 56-56, 61-63, 65, 71-72, 76-77, 79, 81, 85-87, 92-101, 103-104, 111-123.

.In Fiserv, Inc. v. DataTreasury Corporation, CBM2014-00088, Paper 6 (September 4, 2014), the Board instituted a covered business method review of  claims 1, 2, 9, 16, 18, 19, 22, 25, 26, 29, 36, 38–43, 48, 50, 51, 54, 55, 60, 62, 63, and 66 of U.S. Patent No. 6,032,137 (but not claims 3-7, 10-15, 17, 18, 19-21, 24, 27, 30-35, 27, 44-47, 49, 52-53, 56-59, 61, 64-65).

In MasterCard International Incorporated v. D’Agostino, IPR2014-00543, Paper 8 (September 4, 2014), the Board instituted inter partes review of claims 1–38 of U.S. Patent No. 8,036,988 (all of the challenged claims).

In MasterCard International Incorporated v. D’Agostino, IPR2014-00544, Paper 7 (September 4, 2014), the Board instituted inter partes review of claims 1–30 of U.S. Patent No. 7,840,486 (all of the challenged claims).

Dispositions

In BMO Harris Bank National Association v. Stambler, CBM2014-00129, Paper (September 4, 2014), the Board terminated the covered business method review on the joint motion of the parties.

In SAP America, Inc. v. Versata Software, Inc., CBM2013-00042, Paper 42 (September 4, 2014), the Board terminated the covered business method review on the joint motion fo the parties.

 

 

 

Garmin Factors Continue to Keep Additional Discovery Out of Reach

Posted on by

In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol, Limited, IPR2013-00309, Paper (September 4, 2014), petitioner sought (1) detailed sales records of the products covered and not-covered by the patent, (2) records of conception of the invention, (3) testimony and records relating to the identification of prior art.  The Board applied the Garmin Factors.  As to sales information, the Board found petitoner failed under the First Garmin Factor – demonstrating more that a possibility the inventof would be useful and the Fifth Garmin Factor — that resposne was not budensome.  As to conception, the Board denied the additional discovery under the Third Garmin Factor, the ability to generate the information by other means (i.e., already scheduled depositions), and the Fifth Garmin Factor, undue burden.  As to the identification of prior art, the Board denied discovery under the First Garmin Factor — a failure to show the discovery will lead to useful information.

 

September 3, 2014

Posted on by

Institution Decisions

In NeuLion, Inc. v. Cascades Ventures, Inv., IPR2014-00526, Paper 23 (September 3, 2014), the Board denied inter partes review of U.S. Patent No. 8,156,236.

In Apple Inc. v. VirnetX Inc., IPR2014-00481, Paper 11 (September 3, 2014), the Board instituted Inter Partes review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and 37 of U.S. Patent No. 7,188,180 (all of the challenged claims).

In Intel Corporation v. Zond LLC, IPR2014-00455, Paper 12 (September 3, 2014), the Board instituted inter partes review of claims 1–5 and 11–15 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Apple Inc. v. VirnetX Inc., IPR2014-00482, Paper 10 (September 3, 2014), the Board instituted inter partes review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and 37 of U.S. Patent No. 7,188,180 (all of the challenged claims).

In Intel Corporation v. Zond LLC, IPR2014-00456, Paper 12 (September 3, 2014), the Board instituted inter partes review of review of claims 6–10 and 16–20 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Koninklijke Philips N.V. v. iLumisys, Inc., IPR2014-00448, Paper 8 (September 3, 2014), the Board instituted inter partes review of claims 1-10 of U.S. Patent No. 8,093,823.

In Phishme, Inc. v. Chapman Technology Group, Inc., IPR2014-00531, Paper 8, (September 3, 2014), the Board instituted inter partes review of claims 1–5, 8, 12, 13, 16, 19, 28–31, 37, and 40, of U.S. Patent No. 8,484,741 (but not challeged claims 35 and 41).

In Samsung Electronics America, Inc. v. LED Tech Development, LLC, IPR2014-00590, Paper 23, (September 3, 2014), the Board instituted inter partes review of claim 31 of U.S. Patent No. 6,095,661, after the Patent Owner disclaimed challenged claims 27, 28, 38, 42–47, and 49, and denying niter partes review of challenged claims 33, 34, 36, 37, 51, and 52.

 

 

 

 

 

 

Arguments in Claim Charts Continue to Plague Petitions

Posted on by

In Google Inc. v. Visual Real Estate, Inc., IPR2014-01338, Paper 3, IPR2014-01339, Paper 3, IPR2014-01340, Paper 3, and  IPR2014-01341, Paper 3 (September 2, 2014), the Board accorded the petitions a filing date, but objected to the claim charts, because each contained arguments. The Board provided some examples of these “arguments” including saying “To the extent that . . .” and “For the reasons described above . . .” and “well-known methods  . . .”.

 

No Surprises At Hearing; Demonstratives Must Only Contain Evidence of Record

Posted on by

In TriVascular, Inc. v. Shaun Samuels, IPR2013-00493, Paper 39 (September 2, 2014) the Board sustained a number of objections to the patent owner’s demonstrative exhibits. The Board agreed that modified versions of the patent drawings, and animations of the patent drawings “improperly display material not made of record previously in this proceeding” and barred the patent owner from using, citing, or relying upon this material during the hearing, but allowing the patent owner to replace the barred material, however, with evidence that was made of record timely in the case.  The Board also barred a demonstrative that did not exactly quote from evidence of record, but allowed the patent owner to substitute a demonstrative with exact quotation.  The Board did not bar material reproduced exactly from the cited record evidence, which was not previously relied upon, saying that this went to the weight that would be given, not to whether it could be presented.

 

September 2, 2014

Posted on by

New Filings

The Dow Chemical Company filed IPR2014-01436 challenging U.S. Patent No. 7,491, 753 assigned to Mallard Creek Polymers, Inc.

The Dow Chemical Company filed IPR2014-01437 challenging U.S. Patent No. 7,981,946 assigned to Mallard Creek Polymers, Inc.

Dispositions

in Ariosa Diagnostics v. Isis Innovation, IPR2012-00022, Paper 166 (September 2, 2014), the Board  found that claims 1, 2, 4, 5, 8, 19, 20, 24, and 25 of U.S. Patent No. 6,258,540 were unpatentable, but that claims 3, 12, 13, 15, 18, 21, and 22 were not shown to be unpatentable.  Patent owner’s motion to amend was denied.

In McClinton Energy Group L.L.C. v. Magnum Oil Tools International, Ltd., IPR2013-00231, Paper 31 (September 2, 2014), the Board found claims 1–20 (all of the challenged claims) of U.S. Patent No. 8,079,413 were unpatentable.

In Oracle Corporation v. MAZ Encryption Technologies LLC, IPR2014-00472 (September 2, 2014), the Board termianted the proceeding on the joint motion of the parties.