Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, IPR2014-01184, Paper 3, IPR2014-01182, Paper 3, IPR2014-01181, Paper 3, August 5, 2014), the Board granted the Petition a filing date, but gave the petitioner five business days to correct the claim charts. The Board cautioned:

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.

Footnotes are part of the claim charts and arguments should not be included.

In MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00272, Paper 30 (August 5, 2014), one of the parties mistakenly filed, rather than emailed, their exhibits for the Oral Hearing.  The Board expunged the improperly filed exhibits, and reminded parties that these exhibits should be emailed to the Board, but not filed,

Dispositions

In Heartland Tanning, Inc. v. MT Manufacturing, Inc., IPR2014-00018, Paper 30 (August 5, 2014), the Board granted the parties joint motion to terminate the proceedings based on settlement.

New Filings

Ericcson Inc. filed IPR2014-01149 challenging U.S. Patent No. 6,023,783, assigned to Intellectual Ventures I LLC.

Johnson Health Tech Co., Ltd, filed IPR2014-01242 challenging U.S. Patent No. 6,193,631 asigned to Wilmington Trust FSB.

Geox S.p.A. filed IPR2014-01244 challenging U.S. Patent No. 6,855,171 assigned to Columbia Sportswear Company.

Wintek Corporation filed IPR2014-01245 challenging U.S. Patent No. 8,283,935 assigned to TPK TOUCH SOLUTIONS INC.

Mercedes-Benz USA, LLC filed IPR2014-01247 challenging U.S. Patent No. 5,954,781 assigned to Velocity Patents LLC.

Tietex International, Ltd. filed IPR2014-01248 challenging U.S. Patent No. 8,501,639.

HTC Corporation filed IPR2014-01249 challenging U.S. Patent No. 6,362,850, assigned to Flashpoint Technology, Inc.

Institution Decisions

In Schrader International, Inc. v. Wasica Gmbh, IPR2014-00476, Paper 7 (August 2014), instituted inter partes review of claims 1-6, 9-10, 12-19, and 21 (but not claim 11) of U.S. Patent No. 5,602,524.

Dispositions

In Impax Laboratories, Inc. v. Meda Pharmaceuticals Inc., IPR2014-00731, Paper 12 (August 4, 2014), the Board granted the parties’ joint motion to terminate,

New FIlings

Vonage Holdings Corporation filed IPR2014-01223 challenging U.S. Patent No 6,513,066, assigned to Straight Path IP Group, Inc.

NetApp filed IPR2014-01233 challenging U.S. Patent No. 7,987,311, assigned to Crossroads Systems, Inc.

In Greene’s Energy Group, LLC v. Oil States Energy Services, L.L.C., IPR2014-0261, Paper 18 (August 15, 2014), the Board’s advice to a patent own on preparing a motion to amend is a reminder to the rest of us, that amending claims in a IPR is virtuall impossible.  The amendment must “respond to a ground of unpatentability involved in the trial” and it cannot ” enlarge the scope of the claims of the patent or introduce new subject matter.”  Furthermore amendment is not authorized unless the movant shows that theclaims are patentable.  In the 15 pages allowed, the patent owner must:

identify specifically the feature(s) or limitation(s) added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s) or limitation(s), including the construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record, but known to Patent Owner.

A mere conclusory statement by counsel in the motion to amend that one or more added features or limitations are not described in any prior art or would not have been suggested or rendered obvious by the prior art is facially inadequate. It also is insufficient for the movant simply to explain why the proposed substitute claims are patentable in consideration of the challenges on which the Board instituted review. Limiting the discussion either to the references already in the proceeding, or to the narrow combination specifically recited in the claim, does not provide a meaningful analysis.

In these 15 pages the patent owner also must clearly identify the written description support for the proposed substitute claims. Merely indicating where each claim limitation individually is described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.

There is nothing new here — amendment during inter partes review remains out of reach for most patent owners.

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