In Stewart Title Guaranty Company v. Segin Software LLC, CBM2014-00051, paper 20 (August 13, 2014), the Board reminded parties that a party may rely on supplmental evidence when there is an objection to an Exhibit, supplemental, and that under Rule 42.64(b)(2) the supplemental evidence should be served on the objecting party, but it is not not to be filed with Board without authorization to do so.
New Filings
CaptionCall, LLC filed IPR 2014-01287 challenging U.S. Patent No. 7,660,398 assigned to Ultratec, Inc.
Aruze Gaming Macau, Ltd. filed IPR2014-01288 challengnig U.S. Patent No. 7,892,088 assigned to MGT Gaming, Inc.
Institution Decisions
In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00489, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 22-25, 36-50, and 66-123 (“the challenged claims”) of U.S. Patent No. 5,910,988..
In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00490, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 1, 2, 9, 11-27, 29-32, 34-46, 48-52, 54-58, 60-64, 66, and 67 (“the challenged claims”) of U.S. Patent No. 6,032,137.
In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00491, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 1, 2, 9, 11-21, 26, 27, 29-32, 34, 35, 51-53, 55-62, 64, and 65 (the challenged claims) of U.S. Patent No. 5,910,988.
In Macronix International Co., Ltd. v. Spansion LLC, IPR2014-00898, Paper 13 (August 13, 2014), the Board instituted inter partes review of claims 7 and 14 of U.S. Patent No. 7,151,027.
Rehearings
In TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00265 , Paper 17 (August 13, 2014), the Board denied rehearing of its decision declining to institute inter partes review of claims 28–38 of U.S. Patent No. 8,222,588.
In eBay Inc. v. Lockwood, CBM2014-00025, Paper 34, CBM2014-00026, Paper 35 (August 12, 2014) the Board denied eBay’s motion to expunge the declaration of its expert, directed to unpatenability of the prior art, which eBay claimed was unnecessary since the Board only instituted the proceeding on indefiniteness. The patent owner objected because the expert “construed the claims and applied the cited art from the perspective of a person of skill in the art (‘POSA’), demonstrating that a POSA would understand the [metes] and bounds of the claims.”
While parties are permitted to take inconsistent positions, as a practical matter it can sometimes backfire.
Dispositions
In Google Inc. Jongerius Panoramic Technologies, LLC, IPR2013-00191, Paper 70 (August 12, 2014) the Board issued a final written decision that claims –6, 10–15, 17– 19, 21, 23–25, 27, and 28 (all of the challengd claims) of U.S. Patent No. 6,563,529 were unpatentable,
Institution Decisions
In GTNX, Inc. v. Innttra, Inc., CBM2014-00072, Paper 8 (August 12, 2014), the Board intituted covered business method patent review of claims 1-41 of U.S. Patent No. 7,756,794.
In GTNX, Inc. v. Innttra, Inc., CBM2014-00073, Paper 8 (August 12, 2014), the Board intituted covered business method patent review of claims 1-45 of U.S. Patent No. 7,761,387.
In GTNX, Inc. v. Innttra, Inc., CBM2014-00074, Paper 9 (August 12, 2014), the Board intituted covered business method patent review of claims 1-15 of U.S. Patent No. 7,752,142.
In GTNX, Inc. v. Innttra, Inc., CBM2014-00075, Paper 8 (August 12, 2014), the Board intituted covered business method patent review of claims 1-10 and 14 of U.S. Patent No. 7,827,119.
In Google Inc. v. Micrografx, LLC, IPR2013-00532, Paper 11 (August 12, 2014), the Board instituted inter partes review of claims 1-4, 6, 8-11, 13, and 15 of U.S. Patent No. 5,959,633.
In Google Inc. v. Micrografx, LLC, IPR2013-00533, Paper 11 (August 12, 2014), the Board instituted inter partes review of claims 1–3, 5, 7, 10–12, 14, 16, 19, 44, 54–57, 59, 61–66, 68, 69, and 71 (“challenged claims”) of U.S. Patent No. 6,057,854.
In Google Inc. v. Micrografx, LLC, IPR2013-00534, Paper 11 (August 12, 2014), the Board instituted inter partes review of claims 1–5, 8, 9, 12, 36, and 42 (“challenged claims”) of U.S. Patent No. 6,552,732.
Rehearing
Corning Incorporated v. DSM IP ASSETS B.V., IPR2013-00043, Paper 104 (August 12, 2014) denied petitioner’s requset for hearing of its final written decision.
Corning Incorporated v. DSM IP ASSETS B.V., IPR2013-00044, Paper 101 (August 12, 2014) denied petitioner’s requset for hearing of its final written decision.
In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 10 (August 12, 2014), the Board reminded the parties that any agreement or understanding between the patent owner and the petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of the proceeding shall be in writing, and a true copy of that agreement or understanding shall be filed in the Office. 35 U.S.C. § 327(b). The Board added that in order to ensure compliance with 35 U.S.C. § 327(b), and based on the facts of this proceeding, the parties are required to certify in writing that there are no other written or oral agreements or understandings, including any collateral agreements, between them, including but not limited to licenses, covenants not to sue, confidentiality agreements, payment agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the instant proceeding. To the extent that there are other agreements as outlined immediately above, the parties shall file such agreements and may request that any such agreement be treated as business confidential information and be kept separate from the files of the involved patent. 37 C.F.R. § 42.74(c).
Institution Decisions
In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00419, Paper 9 (August 11, 2014), the Board denied inter partes review of claims 1–3, 9–11, 17–20, 26–28, and 34 of U.S. Patent No. 6,967,861.
In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00426, Paper 7 (August 11, 2014), the Board instituted inter partes review of claims 1–3 of U.S. Patent No. 6,445,645.
In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00427, Paper 7 (August 11, 2014), the Board instituted inter partes review of claims 1–4 of U.S. Patent No. 6,385,128.
In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 10 (August 11, 2014), the Board instituted inter partes review of claims 1-12 of U.S. Patent No. 8,534,497.
Dispositions
In Boston Scientific Corp. v. Vascular Solutions, Inc., IPR2014-00759, Paper 10, IPR2014-00760, IPR2014-00761, Paper 10, IPR2014-00762, IPR2014-00763, Paper 13 (August 11, 2014) the Board terminated five inter partes reviews on the joint motion of the parties.
In ZTE (USA), Inc. v. Pragmatus Mobile, LLC, IPR2014-00670, Paper 12 (August 11, 2014) the Board terminated five inter partes reviews on the joint motion of the parties.
Decisions on Rehearing
In TRW Automotive U.S.LLC v. Magna Electronics Inc., IPR2014-00266, Paper 21 (August 11, 2104), the Board granted the Petitioner’s motion for rehearing of the determination not to institute inter partes review on one of four challenged grounds.
In Micro Motion, Inc. v. Invensys System, Inc., IPR2014-00179, Paper 22, IPR2014-00167, Page 24 (August 11, 2014), the Board informed the patent owner that it must address each proposed substitute independent claim in the Motion to Amend, itself, but that it may provide a claim listing that includes proposed substitute dependent claims that only are amended to depend from each new, substitute independent claim. The Board indicated that such a claim listing does not count towards the fifteen page limit for a Motion to Amend.
New Filings
Sony Online Entertainment LLC filed IPR2014-01232 challenging U.S. Patent No. 6,306,035, assigned to Agincourt Gaming LLC.
Sony Online Entertainment LLC filed IPR2014-01255 challenging U.S. Patent No. 8,454,432, assigned to Agincourt Gaming LLC.
Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,311,037.
Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,770,512, assigned to Courtesy Products, Inc.
Initiative for Responsibility in Drug Pricing LLC filedIPR2014-01259 challenging U.S. Patent No. 7,879,828, assigned to Wyeth LLC.
Hamilton Beach Brands, Inc. filed UPR2014-01260 challenging U.S. Patent No. 7,258,884.
Institution Decisions
In ButamaxTM Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00402, Paper 11 (August 8, 2014), the Board instituted inter partes review of claims 1-15 of U.S. Patent No. 8,373,012.
In Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00418, Paper 7 (August 8, 2014), the Board instituted inter partes review of claims 1–11 and 17–19 (all of the challenged claims) of U.S. Patent No. 5,500,819.
Dispositions
In Branch Banking and Trust Company v. EMG Technology, LLC, CBM2014-00094, Paper 9, CBM2014-00145, Paper 8, (August 8, 2014) the Board terminated the proceeding before initiaton of a covered business method review of U.S. Patent No. 7,441,196 on the joint motion of the parties.
In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00415, Pape 51, IPR2013-00416, Paper 35, IPR2013-00417, Paper 62 (August 7, 2014), the patent owner submitted a notice of withdrawal of motion to amend “without prejudice” to pursue the same claims in another application or proceeding. The Board explained that the paper was more than merely a notice of withdrawal of its Motion to Amend, because it specified the desired effect or consequence of the withdrawal. The Board treated the Notice as a motion, which pursuant to 37 C.F.R. § 42.20(b), cannot be filed without prior authorization from the Board, and ordered it expunged.
In Iron Dome LLC v. Chinook Licensing DE, LLC., IPR2014-00674, Paper 7 (August 7, 2014), the Board treated the patent owners request for an award of its attorney’s fees associated with the proceeding, as “sanctions pursuant to 37 C.F.R. § 42.12″ as an unauthorized motion, and required the patent owner to file a new response.
These are timely reminders that the Board should be consulted before any filing (even one attempting with withdraw a prior filing).
New Filings
Zerto, Inc. filed IPR2014-01254 challenging U.S. Patent No. 7,603,395 assigned to EMC Corporation.
Institution Decisions
In Brookwood Companies Incorporated v. Nextec Applications, Inc., IPR2014-00412, Paper 13 (August 7, 2014), the Board instituted inter partes review of claims 1–6, 8–13, and 21–23 (all of the challenged claims) of U.S. Patent No. 5,004,643.
In U.S. Bancorp v. Solutran, Inc., CBM2014-00076, Paper 16 (August 7, 2014), the Board instituted covered business method patent review of claims 1–6 (all of the challenged claims) of U.S. Patent No. 8,311,945.
Dispositions
In Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00149, paper 20 (August 7, 2014), the patent owner moved to cancel claims 1-14 (all of the challenged claims) of U.S. Patent No. 8,321,580, so the Board terminated the inter partes review.
In Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00128, Paper 20 (August 7, 2014), the patent owner moved to cancel claims 1, 2, 5–9, and 11 (all of the challenged claims) of U.S. Patent No. 8,271,688, so the Board terminated the inter partes review.
In Mobotix Corp. v. E-Watch Corporation, IPR2013-00255, Paper 23, (August 7, 2014), the Board issued a final written decision finding claims 1–25 and 32–34 (all of the challenged claims) of U.S. Patent No. 6,970,183 unpatentable.
Decision on Rehearing
In Panel Claw, Inc. v. SunPower Corporation, IPR2014-00388, Paper 14 (August 7, 2014) the Board denied rehearing of its decision not to institute inter partes review of some (claims 17, 18, 36, 38–40, 58, 59, 61–63, 65, 66, 71–73, and 76) of the challenged claims of RE38,988.