In HTC Corporation v. Cellular Communicatiosn Equipment LLC, IPR2014-01135, Paper 3 (July 29, 2014); an dNEC Corporation of America v. Nokia Siemens Networks Vermoegensverwaltung GmbH & Co. KG, IPR2014-01132, Paper 4 (July 29, 2014); the Board  granted the Petitions a filing date, but objected to petitioner’s single column claim chart format, and gave the respective petitioner five business days to file a corrected Petition with the more conventional two column claim charts.  In NEC Corporation of America v. Nokia Siemens Networks OY, IPR2014-01131, Paper 4 (July 29, 2014), the Board granted the Petitions a filing date, but objected to petitioner’s landscape orientation for claim charts, and gave the petitioner five business days to file a corrected Petition with the more conventional portrait orientation.

New Filings

Medtronic, Inc. filed IPR2014-01210 challenging U.S. Patent No. 7,670,358.

Medtronic, Inc. filed IPR2014-01211 challenging U.S. Patent No. 8,361,121.

Medtronic, Inc. filed IPR2014-01212 challenging U.S. Patent No. 7,776,072.

In ATopTech, Inc. v. Sunopsis, Inc., IPR2014-01160, Paper 3,(July 25, 2014), the Board granted a filing date to the petitioner, but noted the absense of an exhibit list referencing the correct exhibit numbers are required by 37 C.F.R §42.63(e), and gave petitioner five business days to correct the defect.

In ATopTech, Inc. v. Sunopsis, Inc., IPR2014-01150, Paper 3, and IPR2014-01159, Paper 3,(July 25, 2014), the Board granted a filing date to the petitioner, but noted the absense of a correct certificate of service required by 37 C.F.R §42.6(e), and gave petitioner five business days to correct the defect.

In Apple Inc. v. Mobile Telecommunications Technologies, LLC, IPR2014-01035, Paper 6 (July 24, 2014), the Board granted a filing date to the petitioner, but noted that the petition used too narrow a font in violation of 37 C.F.R. § 42.6(a)(2)(ii)(A); and failed to certify that the patent for which review is sought is available for inter partes review as required by 37 C.F.R. § 42.104(a), and gave petitioner five business days to correct the defects.

In Apple Inc. v. Mobile Telecommunications Technologies, LLC, IPR2014-01032, Paper 5, IPR2014-01033, Paper 5, and IPR2014-01036, Paper 5 (July 24, 2014),  the Board granted a filing date to the petitioner, but noted that the petition used too narrow a font in violation of 37 C.F.R. § 42.6(a)(2)(ii)(A); failed to certify that the patent for which review is sought is available for inter partes review as required by 37 C.F.R. § 42.104(a) contained incorrect (non-double) spacing contrary to 37 C.F.R. § 42.6(a)(2)(iii) (charts only listing claim limitations should be double-spaced); and failed to certify that Petitioner is not barred or estopped from requesting the review challenging the patent claims on the grounds identified in the petition as required by 37 C.F.R. § 42.104(a), and gave petitioner five business days to correct the defects.

In Apple Inc. v. Mobile Telecommunications Technologies, LLC, IPR2014-01034, Paper 6 (July 24, 2014), the Board granted a filing date to the petitioner, but noted that the petition used too narrow a font in violation of 37 C.F.R. § 42.6(a)(2)(ii)(A); failed to certify that the patent for which review is sought is available for inter partes review as required by 37 C.F.R. § 42.104(a); and failed to have a coplete Exhibit list, and gave petitioner five business days to correct the defects.

New Filings

Valeo Inc. filed IPR2014-01203 challenging U.S. Patent No. 7,859,565 assigned to Donnelly Corporation.

Institution Decisions

In Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., IPR2014-00360 Paper 16 (July 25, 2014), the Board instituted Inter Partes review as to claims 1, 2, 6, 12-14, 17, 21-43, 45-51, and 54-71 of U.S. Patent No. 8,329,216, but not as to challenged claims 72-82.

In Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., IPR2014-00361 Paper 14 (July 25, 2014), the Board denied Inter Partes review of U.S. Patent No. 8,309,122 as barred by 35 U.S.C. 315(b).

In Coupa Software, Inc. v. Ariba, Inc., CBM2-14-00061, Paper 11 (July 25, 2014), the Board instituted a cover business method review of claims 1-45 of U.S. Patent No. 7,117,165.

In Finjan, Inc. v. FireEye, Inc., IPR2014-00492, Paper 8 (July 25, 2014), the Board instituted inter partes review of claims 1, 3–8, 12–14, 16–20, and 22–30 of U.S. Patent No. 8,171,553, but not as to challenged claims 2, 9-11, 15, and 21.

Final Written Decision

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00128, Paper 92 (July 25, 2014), the Board granted patent owner motion to cancel claims 1 through 8 of U.S. Patent No. 7,057,026, effectively ending the inter partes review, since the Board denied patent owner’s motion to add claims 9 through 12.

In ARRIS Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746, Paper 15 (July 24, 2015). the Board actually granted additional discovery of an indemnification agreemenet between Petitioner and Com-Cast, which the patent owner had sued more than a year before the petition was filed.  The Board found that the patent owner had established justification for the limited discovery sought.

In TD Ameritrade Holding Corp. v. Trading Technologies International, Inc., CBM2014-00131, Paper 10 (July 24, 2014), the Board rejected a live demonstration as part of a preliminary response, likening it to new testimonial evidence prohibited by 37 C.F.R. 42.07(c).

Institution Decisions

In Unified Patents, Inc. v. Personalllweb Technologies, LLC, IPR2014-00702, Paper 10 (July 24, 2014), the Board denied inter partes review of U.S. Patetnt No. 5,978,791.

In Lenroc Co. v. Enviro Tech Chemical Services, Inc., IPR2014-00382, Paper 12 (July 24, 2014), the Board denied inter partes review of claims 1-12 of U.S. Patent No. 7,728,132.

 Final Decisions

In  Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 44, IPR2013-00132, Paper 42 (July 24, 2014), the Board found that claims 1–5, 8–12, 14, 19, and 20 of U.S. Patent No. 7,806,360 were unpatentable, but that claims 6, 7, 13, 15–18, and 21 were not shown as unpatentable.

In Zetec, Inc. v. Westinghouse Electric Co. LLC, IPR2014-00384, Paper 10 (July 23, 2014), the Board declined to institute an inter partes review of a petition presenting 127 grounds of unpatentability.  The Board advised:

“Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented . . . . Thus, parties should . . . focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).

The Board found that the petition did not comply with the Board’s rules that a petition must include “[a] full statement of the reasons for the relief requested,” placed a significant and unfair burden on the Patent Owner to respond to underdeveloped arguments for numerous asserted grounds;and placed a significant burden on the Board to evaluate fully the numerous grounds and underdeveloped assertions in the Petition to determine whether Petitioner has shown that it would be likely to prevail.

In Zetec, Inc. v, Westinghouse Electric Company, LLC, IPR2014-00384, Paper 10 (July 23, 2014), the Board denied the institution of inter partes review because there were too many grounds.  The Board observed that “[t]he Petition lists, in a summary table, 68 grounds of unpatentability that rely on one or more of fourteen references” and thus the Petition presents “no fewer than 127 asserted grounds of unpatentability.”

The Board quoted from the Office Patent Trial Practice Guide:

Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented . . . . Thus, parties should . . . focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.

Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763 (Aug. 14, 2012).  The Board concluded that the Petition did not provide sufficient grounds as required by 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4),(5), and further that it placed a significant and unfair burden on the patent owner to respond to “underdeveloped arguments for numerous asserted grounds.”  Finally the Board found that the petition “would place a significant burden on the Board and contravene the efficient administration of the Office.”

Institution Decisions

In Zetec, Inc. v. Westinghouse Electric Company LLC,  IPR2014-00384, Paper 10 (July 23, 2014), the Board denied inter partes review of U.S. Patent No. 6,823,269.

In CustomPlay, LLC v. Clearplay, Inc., IPR2014-00339, Paper 12 (July 23, 2014), the Board granted inter partes review of claims 1-2 and 4-9 of U.S. Patent No. 7,526,784, but not claim 3.

In Microsoft Corporation v. VirnetX Inc., IPR2014-00405, Paper 10 (July 23, 2014), the Board denied inter partes review of claims 1, 4, 6, 10, 12-15, 17, 20, 22, 26, 28-31, 35, and 37 of U.S. Patent No. 7,188,180 as untimely under 35 USC 315(b).

In Microsoft Corporation v. VirnetX Inc., IPR2014-00401, Paper 10 (July 23, 2014), the Board denied inter partes review of claims 1, 4, 6, 10, 12-15, 17, 20, 22, 26, 28-31, 35, and 37 of U.S. Patent No. 7,188,180 as untimely under 35 USC 315(b).

In MotionPoint Corporation v. TransPerfect Global, Inc., CBM2014-00060, Paper 8 (July 23, 2014), instituted claims 1–28 of U.S. Patent No. 6,857,022.