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.

July 7, 2014

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Institution Decision

Conopco, Inc. dba Unilever v. The Procter & Gamble Company,  IPR2014-00506, Paper 17, (July 7, 2014), the Board denied institution of inter partes reveiw of claims 6-10, 14, 15, and 21-23 of U.S. Patent No. 6,451,300.

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00507, Paper 17, (July 7, 2014), the Board denied institution of inter partes reveiw of claims 13, 14, 16, 20-22, 24, 25, 27, 31, and 33 of U.S. Patent No. 6,974,569.

Final Written Decision

LaRose Industries, LLC v. Choon’s Design LLC, IPR2014-00218, Paper 18 (July 7, 2014), on the patent owner’s motion for adverse judgment, the Board determined that claims 1, 5-8, 10, and 11 of U.S. Patent No. 8,485,565 were unpatentable.

 

Details, Details

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In LG Electronics, Inc., v. NFC Technology LLC, IPR2014-00959 , Paper 3 (Julu 3. 2014), the Board granted the Petition a filing date, but pointed out that the font was incorrect and Petition failed to certifiy that the patent was subject to inter partes review.  Petitioner was given five business days to make correction.  The Board called the Petitioner’s attention to 37 C.F.R. § 42.6(a)(2)(ii)(A):

(ii) Either a proportional or monospaced font may be used:

   (A) The proportional font must be 14-point or larger, and
   (B) The monospaced font must not contain more than four characters per centimeter (ten characters per inch);

see also Frequently Asked Questions, G12:

G12

In Ericsson Inc. v. Intellectual Ventures I LLC,  IPR2014-00958, Paper 4 (July 3, 2014), the Board granted a filing date, but gave the petitioner five business days to sequentially number the pages of its exhbits (37 C.F.R. § 42.63(d)(2)(i)) and eliminate the arguments from its claim charts.

In NHK Seating of America, Inc. v. Lear Corporation, IPR2014-00957, Paper 4 (July 2, 2014), the Board granted a filing date to the petition, but gave the petitioner five business days to elimnate the arguments from its claim charts.

In Skechers USA, Inc. v. Aura Technologies, LLC, IPR2014-00955, Paper 3 (July 2, 2014), the Board granted a filing date to the petition, but gave the petitioner five business days to elimnate the arguments from its claim charts.

Watch those details, the Board is!

 

Some Observations on Observations

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In Hayward Industries, Inc. v. Pentainer Water Pool and Spa, Inc., IPR2013-00285, Paper 31, IPR2013-00287, Paper 31 (July 3, 2014), the Board provided some guidance on observations on cross-examination, answering the question whether a party can file observations on the cross-examination of its own witness. The Board expalined that the party taking the cross-examination files the observations.  Observations on cross-examination are not an opportunity to rehabilitate testimony given by a witness under cross-examination, and the Board cautioned that such observations would not be appropriate, citing CBS Interactive Inc. v. Wireless Science, LLC, IPR2013-00033, Paper 101, 3-5 (discussing the presentation of observations). Clarifying or otherwise rehabilitating testimony should be the subject of redirect of the witness after the cross-examination.

 

July 3, 2014

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New Filings

Wireless Seismic, Inc. filed IPR2014-01113 challenging U.S. Pat. 7,124,028, IPR2014-0111 challenging U.S. Pat. 8,644,111 IPR2014-01115 challenging U.S. Pat. 8,296,068, all assigned to Fairfield Industries, Inc.

Ace Bed Co., Ltd. filed IPR2014-01119 challenging U.S. Pat. 7,404,223.

Koninklijke Philips N.V. filed IPR2014-01120 challenging U.S. Pat. 8,382,327, assigned to Ilumisys, Inc.

Broad Ocean Motor LLC filed IPR2014-01121 challenging U.S. Pat. 7,626,349 assigned to NIDEC Motor Corporation; IPR2014-01122 challenging U.S. Pat. 7,208,895 assigned to Emerson Electric Co., and IPR2014-01123 challenging U.S. Pat. 7,312,970 assigned to Emerson Electric Co.

Institution Decisions

In TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00296, Paper 15 , IPR2014-00297, Paper 15 , and IPR2014-00296, Paper 19, the Board denied inter partes review of  U.S. Patent No. 8,324,552.

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00397, Paper 6, the Board instituted an inter partes review of claims 1–16 of U.S. Patent No. 6,833,686.

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00400, Paper 9, the Board instituted an inter partes review of claims 3 and 4 (but not 1 and 2) of U.S. Patent No. 6,034,623.

 

Prior Art “Patents and Printed Publications” Include the Patent Under Review

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In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309, Paper  07/03/2014 19, the Board denied reconsideration that admitted prior art in the patent under review constituted “prior art consisting fo patents or printed publications” under 35 U.S.C. 311(b).  The Board noted that it has long treated a patent applicant’s admissions as prior art.  The Board said that: “The ’640 patent is undeniably a “patent.” The fact that Saint-Gobain made admissions against its own interest in the public record within the four corners of its own patent is reliable evidence that the admitted prior art antedates the claimed invention.”

 

Inventor Testimony Irrelevant

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In International Business Machines Corporation v.Intellectual Ventures II LLC, IPR2014-00180, Paper 22, (July 3, 2014), the Board denied petitioner’s request to file a transcript of the inventor’s testimony as supplemental information.  The Board was unpersuaded by the argument that the inventor testimony is relevant to a claim for which trial has been instituted. The Board said that the general relevancy of an inventor’s testimony regarding the operation of the invention has little relevance to inter partse review proceedings. The possibility that it might be useful in understanding the invention is not significant enough to show that consideration of the information would be in the interests of justice to allow additional testimony on issues already developed by Petitioner on the record.  The Board observed that the request focused on its utility to the panel’s understanding of the technology or assistance in claim construction, a utility that seems generic in nature and untethered to any specific claim for which trial has been instituted.

 

Patent Owner Failed to Justify Joining Five IPR’s

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In Ford Motor Co. v. Cruise Control Technologies LLC, IPR2014-0281, Paper 19, (July 2, 2014) the Board denied patent owner’s motion to join five proceedings U.S. Patent No. 6,324,463.  The Board ducked the question of whether proceedings could be joined before they were instituted, finding that in any event the patent owner failed to justify joinder.

As the moving party, the patent owner had the burden of proof to establish that it is entitled to joinder of the five subject proceedings. 37 C.F.R. § 42.20(c) (2013), and the Board was not persuaded that joinder would reduce, in any material manner, the burden placed upon Patent Owner in defending the validity of the ’463 patent before the Board. The Board noted that the Patent Owner will still have to defend against the same number of parties and prepare briefs addressing the same grounds.  The Board said that the patent owner “presents no credible evidence or argument in support of its statement that five separate proceedings “means five of everything at five times the cost” versus one joined proceeding which would involve the same substantive issues as the five separate proceedings. The alleged discovery burdens imposed by five separate proceedings can be alleviated substantially by entering the same schedule in each case, in conjunction with cooperation between the parties and motion practice in the event of disputes — which is no different than what would happen in one joined proceeding.

The Board agreed with Petitioner that Patent Owner invited a multi-front battle concerning the validity of the ’463 patent when it filed fifteen separate infringement lawsuits.

Finally the Board was not persuaded that  joinder in the present case, whether before or after institution of trials, materially would benefit the Board, noting that the same three-Judge panel has been assigned to each of the five subject proceedings.

July 2, 2014

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Institution Decisions

The Board instituted an inter partes review in Toyota Motor North America v. Cruise Control Technologies LLC, IPR2014-00280, as to claims 1–3, 5, 12–19, 21–26, and 28–31 of claims 1–5, 12–16, 18, 19, 21, 25–28, and 34–36 of U.S. Patent No. 6,324,463.

The Board instituted an inter partes review in Ford Motor Company v. Cruise Control Technologies LLC, IPR2014-00281, as to claims 1–3, 5, 12–19, 21–26, and 28–31 (but not challenged claims 20, 27, and 34-36) of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in Subaru of America, Inc. v. Cruise Control Technologies LLC, IPR2014-00279, Paper 13, as to claims 1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in American Honda Motor Co., Inc. v. Cruise Control Technologies LLC, IPR2014-00289, Paper 19, as to claims  1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in Nissan North America, Inc. v. Cruise Control Technologies LLC, IPR2014-00291, Paper 19, as to claims 1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.

 

 

 

A Party Needs Compelling Reasons for Discovery

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Permobil, Inc. v. Pride Mobility Products Corporation,  IPR2013-00407, Paper 43 (July 2, 2014), the Board denied the patent owner’s motion to compel production evidence of copying of the products embodying patent owner’s claims under review.  The patent owner first argued that this was routine discovery under 37 C.F.R. § 42.51(b)(1)(iii)., because it was inconsistent with the position taken by petitioner.  The Board, however, did not find the requested discovery to be sufficient inconsistent with the petitioner’s testimony.

The patent owner also argued that the discovery should be permitted as additional discovery in the interest of justice. pursuant to 37 C.F.R. § 42.51(b)(2)(i).  The Board has said that “one requesting additional discovery should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be discovered.” noted that in Garmin v. Cuozzo, IPR2012-00001, (PTAB Mar. 5, 2013).  The Board was not persuaded that patent owner had established beyond speculation that any useful information will be discovered.

Another recurring concern by the Board was that the patent owner’s request of evidecne realting to devices embodying patent owner’s claims under review” inherently requires s determination of infringemetn, an issue that is not before the Board in an inter partes review.

 

 

The Board Cannot Misapprehend or Overlooked an Argument Not Presented

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In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00062, Paper (July 2, 2014) The Board denied rehearing of its decision not to institute an inter partes review of certain redundant grounds.  In its request for rehearing, petitioner provided an explanation of how the grounds were not redundant, but the Board said:

The fact that Rackspace points out explicitly now the relative benefits of certain grounds over others does not mean that we misapprehended or overlooked such benefits. In other words, we could not have misapprehended or overlooked an argument that was not presented in the first instance in the petition.

A petitioner presenting multiple grounds should justifiy the mulitple grounds in the petition, or risk a finding of redundancy that cannot be overcome.