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.

Common Mistakes in Petitions

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In Mitchell International, Inc. v. Audatex North America, Inc., CBM2014-00171, Paper 3 CBM2014-00173, Paper 3 CBM2014-00174, Paper 3 (August 29, 2014), the Board granted the Petition a filing date but gave petitioner five days to correct defects:

  • Footnotes should be doublespaced. 37 C.F.R. § 42.6(a)(2)(iii).
  • Failure to affix exhibit labels to the lower right corner of the first page of the exhibits. 37 C.F.R. § 42.63(d)(1), (2)(ii).
  • Failure to sequentially number each page of the exhibits.  37 C.F.R. § 42.63(d)(2)(i).

 

Interest of Justice Require Consideration of One-Day-Late Documents

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In Callidus Software Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 39,  CBM2013-00053, Paper 35, CBM2013-00054, Paper 37,(August 29, 2014), the Board denied patent owner’s motion to expunge the petitioner late-filed papers.  The Board said that weighing the prejudice to patent owner of the one day late filing versus the prejudice to Petitioner if it did not consider, on the merits, the papers, it was in the interests of justice to consider the late–filed documents.

August 29, 2014

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New Filings

Pay-Plus Solutions, Inc. filed IPR2014-01414 challenging U.S. Patent No. RE 043,904.

Institution Decisions

In Mohawk Resources Ltd. v. Vehicle Service Group LLC, IPR2014-00464, Paper 10 (August 29, 2014), the Board  instituted inter partes review of claims 39, 42–51, 53, 55–61, 63–65, 68, 70, 71, 76, 77, 79, 84, 133–135, and 157of U.S. Patent No. 6,983,196 (all of the challenged claims).

Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454  Paper 12 (August 29, 2014), the Board denied inter partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No. 5,563,883.

Dispositions

In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.

In Syntroleum Corporation v. Neste Oil OYJ, IPR2013-00178, Paper 63 (August 29, 2014), the Patent Owner’s Motion to Amend was granted with respect to the cancellation of claims 1–20 and denied with respect to the substitution of claims 21–30.

Rehearing Decisions

In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2014-00150, Paper 12 (August 29, 2014) the Board denied rehearing of the Board’s decision to institute inter partes review, arguing the Board improperly relied upon its own speculation as to how a referenced device operates and improperly asserted that the patentee acted as its own lexicographer.

In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2014-00150, Paper 13 (August 29, 2014) the Board denied rehearing of the Board’s decision not to institute inter partes review of on an alternative grounds.

In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2013-00472, Paper 28 (August 29, 2014) the Board denied rehearing of the decision to institute inter partes review.

In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00304, Paper 19(August 29, 2014), the Board denied rehearing of the decision to institute inter partes review.

In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00305, Paper 19(August 29, 2014), the Board denied rehearing of the decision to institute inter partes review.

In Primera Technology, Inc, v. Accuplace, IPR2013-00196, Paper 52 (August 29, 2014), the Board denied rehearing of its FInal Written Decision that all challenged claims (claims 1-20) of U.S. Patent No. 8,013,884 were unpatentable.

In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2013-00472, Paper 28 (August 29, 2014), the Board denied rehearing of its decision not to institute inter partes review as to some of the asserted grounds.

 

 

Board Declines to Issue Final Written Decision without a Petitioner

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In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.  In the joint motion to terminate, the patent owner requested: “Patent Owner does not request dismissal of the review and requests that these proceedings advance to final written decision after Patent Owner is heard at final argument.”  The Board noted that “[g]enerally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.”  The Board said “The joint motion to terminate with respect to Petitioner does not persuade us that deviating from the general expectation of termination via settlement is warranted in this situation. At this stage in the proceeding, the record lacks full briefing, including Petitioner’s reply, and accordingly lacks “streamlin[ed,] and converg[ed]” issues, as necessary to render a decision in a “timely, fair, and efficient manner.”

 

 

 

 

Lost (without) the Translation

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In Wintek Corporation v. TPK Touch Solutions, Inc., IPR2013-00567, Paper  40, IPR2013-00568, Paper 41 (August 28, 2014), when petitioner arrived at the deposition of patent owner’s expert, it was surprised to find that the witness, who provided an English declaration, needed a translator.  The patent owner thoughtfully provided one, but petitioner wanted its own translator as a double check.  This could not be arranged on short notice, and the witness was not aviable for another deposition in the U.S. in the near future.  The parties approached to the Board for guidance, and the petitioner wanted reimbursement for its wasted costs.   The Board told the parties to work things out, and authorized the petitioner to move for its deposition costs if agreement could not be reached.

August 28, 2014

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New Filings

BlackBerry Corporation filed IPR2014-01406 challenging U.S. Patent No. 6,947,748 assigned to Adaptix, Inc.

BlackBerry Corporation filed IPR2014-01408 challenging U.S. Patent No. 7,454,212 assigned to Adaptix, Inc.

Institution Decisions

In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00645, Paper 12, the Board instituted itner partes review of claims 1, 2, 5, 6, 10, 18–22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 (all of the challenged claims).

Rehearing

In NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 67 (August 28, 2014), the Board denied rehearing of the final written decision the NuVasive had not shown by a preponderance of the evidence that claims 9–16 and 24–30 of US Patent No. 8,251,997 were unpatentable.

In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00257, Paper 18 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.

In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00259, Paper 21 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.

In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00293, Paper 21 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.

In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00296, Paper 17 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.

Cross-Examination is Not Limited to Documents Cited in Declaration

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In Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 32 (August 28, 2014), the petioner filed a Supplemental Notice of Deposition of patent owner’s witness, indicating that its cross-examination of the witness “may rely on,” among other things, a prior declaration by the witness filed in district court and three U.S. patents.  The patent owner requested a conference with the Board because such cross- examination necessarily would be outside the scope of the direct testimony set forth in his IPR Declaration.

The Board disagreed with the Patent Owner, noting:

We contemplate multiple scenarios in which other documents may be used for cross-examining a witness, while staying within the scope of his or her direct testimony. The fact that a document is not cited or discussed in a declaration is not dispositive for purposes of enforcing § 42.53(d)(5)(ii).

Claim Charts Continue to Be a Problem

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In Ford Motor Company v. Cuozzo Speed Technologies, Inc., IPR2014-01393, Paper 3 (August 28, 2014), the Board granted the petition a filing date, but required petitioner to correct its claim chart in five days, noting:

Claim charts should only be used to provide an element-by-element showing as to how the prior art teaches the limitations of a claim (e.g., citations to a prior art reference, quotations from a prior art reference). Claim charts may not include arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. A mere citation to an expert declaration (e.g., “See Ex. 1015 ¶ 29”) in a claim chart is permissible, but anything more than a mere citation is improper.

 

You have to Object to Exclude

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In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 46 (August 27, 2014), the Board denied the patent owner’s motion to exclude. The Board first review the proper procedure for objecting to, and moving to exclude, evidence: When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. See 37 C.F.R. § 42.64(b)(1). Once a trial has been instituted, an objection must be served within five business days.  C.F.R. § 42.64(b)(1).The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. C.F.R. § 42.64(b)(1). This process allows the party relying on the evidence to which an objection is served timely the opportunity to correct, by serving supplemental evidence within ten business days of the service of the objection. 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. 37 C.F.R. § 42.64(c).

The Board noted that the patent owner failed to indicate it served objections, and did not identify or explain its objections.  The Board denied the motion to exclude in view of the patent owner’s failure to comport with the requirements of 37 C.F.R. § 42.64.

 

 

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