In SAP America, Inc. v. Versata Software, Inc., CBM2013-00042, Paper 32 (July 10, 2014), the Board denied Versata discovery of the software corresponding to the documentation relied upon to prove the claims unpatentable, because it was not clear that petitioner’s witness relied upon the software.
Author Archives: Bryan Wheelock
Another Case Where BRI=Ordinary Meaning
In Cisco Systems, Inc. v. AIP Acquisition LLC, IPR2014-00247, Paper 20 (July 10, 2014), the Board previously held that if U.S. Patent No. 7,724,879 expires before the final written decision, the claims would be given their ordinary meaning rather than their broadest reasonable interpretation. In Paper 20 the Board decided that coincidentally, the ordinary meaning and the broadest reasonable interpretation for the disputed terms were the same.
July 10, 2010
New Petitions Filed
Actavis, Inc. filed IPR2014-01126 (July 10, 2014) challenging U.S. Patent No. RE38,551.
NEC Corporation of America filed IPR2014-001131 (July 10, 2014) challenging U.S. Patent No. 6,819.923, assigned to Nokia Siemens Networks OY.
NEC Corporation of America filed IPR2014-001132 (July 10, 2014) challenging U.S. Patent No. 7,215,962, assigned to Nokia Siemens Networks GmbH & Co., KG.
Pantech Co. Ltd. filed IPR2014-001133 (July 10, 2014) challenging U.S. Patent No. 7,218,923, assigned to Nokia Siemens Networks OY.
Amazon.com, Inc., filed IPR2014-001134 (July 10, 2014) challenging U.S. Patent No. 7,914,174 assigned to Siemens AG.
HTC Corporation filed IPR2014-001135 (July 10, 2014) challenging U.S. Patent No. 6,377,804, assigned to Nokia Siemens Networks OY.
HTC Corporation filed IPR2014-001136 (July 10, 2014) challenging U.S. Patent No. 8,055,820, assigned to Cellular Communications Equipment LLC.
Institution Decisions
In Jack Henry And Associates, Inc. v. DataTreasury Corporation, CBM2014-00056 (July 10, 2014), the Board granted covered business method review of claims 42 and 43 (but not challenged claims 1, 2, 16, 18, 26, 27, 29, 36, and 38) of U.S. Patent No. 6,032,137.
In Jack Henry And Associates, Inc. v. DataTreasury Corporation, CBM2014-00057 (July 10, 2014), the Board granted covered business method review of claims 42 and 43 (but not challenged claims 1, 2, 16, 18, 26, 27, 29, 36, and 38) of U.S. Patent No. 6,032,137.
Square, Inc. v.REM Holdings 3, LLC, IPR2014-00312, Paper 12 (July 10, 2014), the Board instituted inter partes review of claims 1-17 of U.S. Patent No. 8,584,946.
Purdue Pharma L.P. v. Depomed, Inc., IPR2014-00378, Paper 10 (July 10, 2014), the Board instituted inter partes review of claims 1, 8-10, 13-15, 61-62 (but not challenged claims 10 and 11) of U.S. Patetn No. 6,340,475.
Euro-Pro Operating LLC v. Acorne Enterprises, LLC, IPR2014-00351, Paper 19 (July 10, 2014), the Board instituted inter partes review of claims 1, 13, and 14 of U.S. Patent No. 6,515,262.
SAP America, Inc. v. Clouding IP, LLC, IPR2014-00308, Paper 8 (July 8, 2014), the Board instituted inter partes review of claims 1-9 of U.S. Patent No. 5,825,891.
Final Written Decisions
Harmonic Inc. v. Avid Technology, Inc., IPR2013-00232, Paper 27 (July 10, 2014), the Board held that claims 1-10 of U.S. Patent No. 5,495,291 were unpatentable (but not claims 11-16).
NuVasive, Inc. Waraw Orthopedic, Inc., IPR2013-00206, Paper 65, (July 10, 2014), the Board held that claims 17–23 of U.S. Patent No. 8,251,997 were unpatentable, but not challenged claims 9–16 and 24–30.
NuVasive, Inc. Waraw Orthopedic, Inc., IPR2013-00208, Paper 62, (July 10, 2014), the Board held that claims 1–8 of U.S. Patent No. 8,251,997 were unpatentable.
Ex Parte Contacts
In Samsung Electronics Co., Ltd. in Black Hills Media, LLC, IPR2014-00717 Papers 6 and 7, IPR2014-00735, Papers 8 and 9 (July 10, 2014), the patent owner sent an improper email to the Board. In response, the petitioner send an improper reply email to the Board. The Board instructed that the proper way to address an improper contact with the Board:
If counsel becomes concerned about unauthorized filings by an opponent, counsel should request a conference with the Board. A substantive e-mail response is not appropriate and will not be considered. Any further such filings by either party will likely result in sanctions.
Joinder Defeats the Bar under 35 U.S.C. § 315(b)
In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 19, (July 9, 2014) the Board granted Enzymotec’s motion for joinder of IPR2014-00556 with IPR2014-00003. Absent joinder with the other proceeding, Enzymotec’s Petition for Inter partes review is barred under 35 U.S.C. § 315(b).
The Board did not believe that the possibility of broadening the scope of issues in IPR2014-00003 was an adequate reason for denying joinder, noting section 315(c) permits joinder of “any person who properly files a petition under section 311.” There is no language in either § 311 or § 315(c) requiring the Board to limit Enzymotec’s Petition to identical issues in IPR2014-00003.
July 9, 2014
New Petitions Filed
RPC Formatec GmbH filed IPR2014-01127 challenging U.S. Patent No. 8,662,075.
Institution Decisions
In SAP America Inc. v. Clouding IP, LLC, IPR2014-00299, Paper 8 (July 9, 2014) the Board instituted inter partes review of claims 1, 2, 25, 28, 32, (but not 50–57) of U.S. Patent No. 6,925,481.
In SAP America Inc. v. Clouding IP, LLC, IPR2014-00300, Paper 9 (July 9, 2014) the Board instituted inter partes review of claims 1–9 and 17 of U.S. Patent No. 7,254,621.
In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 18 (July 9, 2014), the Board instituted inter partes review of claims 1 – 6, 9, 12, 13, 19 – 29, 32, 35, 36, and 42 – 46 of U.S. Patent No. 8,278,351.
Final Written Decisions
In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00407, Paper 14, IPR2014-00408, Paper 13 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.
In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00209, Paper 28, IPR2014-00212, Paper 30 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.
Board Cuts Patent Owners Time in Half to Stay on Schedule
In Reloaded Games, Inc. v. Parallel Networks, LLC, IPR2014-00950, Paper 9 (July 8, 2014), Petitioner filed a second petition for inter partes review covering claims for which trial was not instituted in its first petition for itner partes review. After observing that 37 C.F.R. § 42.107(b) gives a patent owner 3 months to file its preliminary response must be filed within 3 months of the filing date of a petition. 37 C.F.R. § 42.107(b), the Board noted that under 37 C.F.R. § 42.5(c)(1) it may modify times set by rule, taking into account any statutory pendency goal. In view of the circumstances and the statutory deadlines in first inter partes review, the Board cut the patent owner time for response in half, to preserve the possibility of joining the two proceedings.
July 8, 2014
Institution Decisions
Stewart Title Guaranty Company v. Segin Software LLC, CBM2014-00051 (July 8, 2014) instituted a covered business method review of claims 1–10 of U.S. Patent No. 8,165,939.
SDI Technologies, Inc. v. Bose Corporation, IPR2014-00343, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 52, 53, 55-61, and 75 of U.S. Patent No. 8,401,682.
SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 51-53, 55-62, 75, and 76 of 8,364,295.
PRISM Pharma Co., Ltd. v. JW Pharmaceutical Corp., IPR2014-00315, Paper 14, (July 8, 2014), the Board denied inter partes review of claims 1-3 and 5-7 of U.S. Patent No. 8,318,738.
Final Written Decisions
Smith & Nephew, Inc.v. The University of North Carolina at Chapel Hill, IPR2-14-00112 , Paper 21 (July 8, 2014), the Board terminated the proceeding in view of the Settment between the parties.
More Details, Details
in Diablo Technologies, Inc. v. DBD Credit Funding LLC, IPR2014-00882, Paper 4 IPR2014-00883, Paper 3, IPR2014-01011, Paper 4 (July 7, 2014), the Board granted the Petition a filing date, but identifed two defects that petitioner had to correct within five days: the certificate of servce was a separate paper and tables other than claim charges were single-spaced.
More Details, Details
Integrated Global Concepts, Inc. v. J2 Global, Inc., IPR2014-01027, Paper 4 (July 7, 2014), the Board granted the petition a filing date, but required the petition to fix the claim charts, which 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.” The Board also required the petitioner to double space its footnotes.