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.

August 27, 2014

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Institution Decisions

In Intel Corporation v. Zond, LLC, IPR2014-00444, Paper 13 (August 27, 2014), the Board instituted inter partes review of claims 2, 3, 5–9, 13–16, 19, 41–43, and 45 of U.S. Patent No. 7,147,759 (all of the challenged claims).

In Intel Corporation v. Zond, LLC, IPR2014-00447, Paper 13 (August 27, 2014), the Board instituted inter partes review of claim 40 of U.S. Patent No. 7,147,759 (all of the challenged claims).

Final Written Decisions

In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 45 (August 27, 2014), the Board found claims 1-10 of U.S. Patent No. 7,999,721 (all of the challenged claims) were unpatentable.

Rehearing Decisions

In TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2014-00258, Paper 18 (August 27, 2014) the Board denied rehearing of the denial of partes review.

 

August 25, 2014

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Institution Decisions

In Ricoh Americas Corporation v. MPHJ Technology Investments, Inc., IPR2014-00539, Paper 7 (August 25, 2014) the Board instituted inter partes review of claims 1, 2, 4, 6-9, 11, 13-16, 18, 20-23, 25, 27, 28, 34, 35, 37, 39-42, 44, 46, and 47 of U.S. Patent No. 7,477,410 (all of the challenged claims).

Dispositions
In Samsung Electronics America, Inc. v. Pragmatus Mobile LLC, IPR2014-00582, Paper 11 (August 25, 2014), the Board terminated the proceedings on the joint motion of the parties.

In Netgear, Inc. v. Freeny, IPR2014-00704, Paper 8 (August 25, 2014), the Board terminated the proceedings on the joint motion of the parties.

In Apple Inc. v. WhitServe LLC, IPR2014-00268, Paper 27 (August 25, 2014), the Board terminated the proceedings on the joint motion of the parties. 08/25/2014

Accept No Substitutes – Lead Counsel Must Attend Final Hearing

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In Toyota Motor Corporation v. Hagenbuch, IPR2013-00483, Paper 35 (August 25, 2014), the Board rejected the patent owner’s request that lead counsel did not have to attend the hearing.  The Board was not persuaded that the cost was a sufficient reason to allow lead counsel to skip the hearing, particularly where back-up counsel was not a licensed practitioner.

The Board and Secondary Considerations

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Commercial Success

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Commercial success typically is shown with evidence of “significant sales in a relevant market.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (citation omitted). Furthermore, to establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.”  In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.”  Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”).

Copying 

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).

 

August 23, 2014

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New Filings

SMART Modular Technologies Inc. filed IPR2014-01369 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01370 challenging U.S. Patent No. 8,301,833 assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01371 challenging U.S. Patent No. 8,516,187, assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01372 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01373 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01374 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

SMART Modular Technologies Inc. filed IPR2014-01375 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

August 22, 2014

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New Filings

LG Display Co., Ltd. filed IPR2014-01362 challenging U.S. Patent No. 7,384,177 assigned to INNOVATIVE DISPLAY TECHNOLOGIES LLC

Dispositions

In Zodiac Pool Systems, Inc. v. Aqua Products, Inc., IPR2013-00159, Paper 71 (August 22, 2012), the Board held that claims 1–9, 13, 14, 16, and 19–21 of U.S. Patent No. 8,273,183 are unpatentable, and denied the patent owners motion to amend.

In U.S. Bancorp v. Retirement Capital Access Management Company LLC, CBM 2013-00014, Paper 33, the Board held that claims 1, 13, 14, 18, 30, and 31 of U.S. Patent No. 6,625,582.

In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21 (August 22, 2014) the Board terminated the inter partes review on the joint motion of the parties.

 

 

You Need to Show Commercial Success, In Order to Discover Evidence of Commercial Success

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In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19, 2014 (August 22, 2014), the Board patent owner’s motion for additional discovery because it was persuaded that patent owner has shown, beyond mere speculation or possibility, that its requests would return something useful.  The Board noted that the patent owner provided bare assertions of an alleged commercial success without supporting those assertions with facts or other evidence, and failed to provide a threshold amount of evidence tending to show that there is a nexus between the alleged commercial success and the features of the proposed substitute claims.

The Board concluded that patent owner:

 has not provided a threshold amount of evidence of (1) sales allegedly amounting to commercial success, (2) an alleged nexus between the claimed inventions and any commercial success of Petitioner’s products, (3) evidence of efforts to replicate the features of the proposed substitute claims, or (4) evidence that Petitioner has the requested laudatory documents. Although a conclusive showing of any of these facts is not necessary at this stage, some evidence is needed to establish that there is more than a mere possibility that Patent Owner’s requests would uncover something useful.

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Double Check Your Exhibits

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In Schott Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper  21 (August 21, 2014), the patent owner pointed out that rather than uploading the expert declaration, the petitioner uploaded a different document, and pointed out that the petition should not have been accorded a filing date until the expert declaration was properly uploaded.  Even though the declaration was served on the patent owner, and the petitioner uploaded the declaration on the next day that the Office was open, the Board agreed, and reset the filing date.  The Board did indicate that the petitioner could move that the petition be accorded an earlier filing date.

In a case like this, where the filing date of the petition is crticial to avoid a time bar, double checking that the proper exhibits are uploaded can be critical.

 

August 21, 2014

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Institution Decisions

In Finisar Corporation v. Thomas Swan & Co. Ltd., IPR2014-00461, Paper 9 (August 21, 2014), the Board instituted inter partes review of claims 1-27 of U.S. Patent No. 7,664,395 (all of the challenged claims).

In Finisar Corporation v. Thomas Swan & Co. Ltd., IPR2014-00462, Paper 9 (August 21, 2014), the Board instituted inter partes review of claims 18 and 19 of U.S. Patent No. 8,089,683 (all of the challenged claims).

In Finisar Corporation v. Thomas Swan & Co. Ltd., IPR2014-00465, Paper 9 (August 21, 2014), the Board instituted inter partes review of claims 1, 29, 60, 66, 71–73, 76, and 91 of U.S. Patent No. 8,335,033, but not as to challenged claims 2, 4, 5, 17–19, 22–28, 30, 31, 56, 58, 61–65, 67, 68, 70, 74, 75, 78, 89, and 90 (about 23% of the challenged claims).

In Finisar Corporation v. Thomas Swan & Co. Ltd., IPR2014-00460, Paper 9 (August 21, 2014), the Board instituted inter partes review of claims 1,2, 4-9, and 11–14 of U.S. Patent No. 7,145,710, but not as to claims 3 and 10.

In Skyhawke Technologies, LLC v. L&H Concepts LLC, IPR2014-00438, Paper 7, (August 21, 2014) the Board instituted inter partes review of claims 1–5, 13, and 17 of U.S. Patent No. 5,779,566, all of the challenged claims, but not on all of the challenged grounds.

In Skyhawke Technologies, LLC v. L&H Concepts LLC, IPR2014-00437, Paper 8, (August 21, 2014) the Board instituted inter partes review of claims 8–11, 14, and 18 of U.S. Patent No. 5,779,566, all of the challenged claims, but not on all of the challenged grounds.

Filing Dates and Corrected Filing Dates

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In SCHOTT Gemtron Corporation SSW Holdings Company, Inc., IPR2014-00367, Paper 21 (August 21, 2014), the Board changed the filing date of the Petition to the date that all of petitioner’s papers, including the supporting declaration, were received.  Because this change may have made the petition untimely, the Board gave the petitioner time to file a motion for corrected filing date, referring the petitioner to ABB Inc. v. Roy-G-Biv Corp., IPR2013-00063, slip op. (PTAB Jan. 16, 2013) (Paper 21), and Conmed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624, slip op. (PTAB Feb. 21, 2014) (Paper 18), addressing motions to correct filed in similar circumstances.