In NHK Seating of America, Inc. v. Lear Corporation, IPR2014-00115,Paper 27, (July 1, 2014), the patent owner objected to petitioner’s translation of one of the exhbiits, so the petitioner sought to file a new transaltion. The Board granted the motion, and the Patent Owner wanted to depose the translator, arguing that the translation was accompanied by a declaration of the translator; and thus, the deposition of the translator was covered by the rule allowing cross-examination of affidavit testimony. 37 C.F.R. 42.51(1)(ii). The Board agreed with the patent owner, but encouraged the parties to confer before the deposition
Author Archives: Bryan Wheelock
July 1, 2014
Institution Decisions
In Cardinal Commerce Corp. v. SignatureLink, Inc., IPR 2014-00545, Paper 11 (July 1, 2014), the Board terminted the proceeding based upon a settlement reached by the parties).
Final Written Decisions
In ZTE Corporation v. ContentGuard Holdings, Inc., IPR2013-00137, Paper 58 (July 1, 2014), petitioner challenged claims 1-84 of U.S. Patent No. 6,963,859, but the Board only instituted trial as to claims 1-5, 9-11, 15-17, 19, 21-33, 37, 38, 42-44, 46, 48-62, 66, 67, 71-73, 75, and 77-84. In its Final Written Decision, the Board found that petitioner failed to demonstrate the claims were unpatentable.
In ZTE Corporation v. ContentGuard Holdings, Inc., IPR2013-00138, Paper 57 (July 1, 2014), petitioner challenged claims 1-56 of U.S. Patent No. 7,139,736, but the Board only instituted trial as to claims 1–18, 20–38, and 40–56. In its Final Written Decision, the Board found that petitioner failed to demonstrate the claims were unpatentable.
In TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2014-00293, Paper 19, (July 1, 2014), the Board denied inter partes review of claims 1–3, 5–10, 12, 15–25, and 27–31 of U.S. Patent No. 8,314,689.
June 30, 2014
Institution Decisions
In Panel Claw, Inc. v. SunPower Corporation, IPR2014-00388, Paper 10, June 30, 2014), the Board instited inter partes review of claims 1, 55, 56, 78, and 79, but not with respect to claims 17, 18, 36, 38–40, 58, 59, 61– 63, 65, 66, 71–73, and 76 of U.S. Patent No. RE38,988.
In MediaTek Incorporated v. Netvinci, Inc., IPR2014-00328, Paper 24 (June 30, 2014), the Board denied inter partes review of claims 1-16 (the “challenged claims”) of U.S. Patent No. 6,601,126.
FInal Written Decision
In Redline Detection, LLC v. Star EnviroTech, Inc., IPR2013-00106, Paper 66 (June 30, 2014), the Board found that claims 9 and 10 of Patent No. US 6,526,808 (all of the challenged claims) were not unpatentable.
June 27, 2014
New Petitions Filed
Apple, Inc., filed IPR2014-01032 challenging U.S. Patent No. 5,590,403 assigned to Bell Industries, Inc.
Apple, Inc., filed IPR2014-01033 challenging U.S. Patent No. 5,894,506 assigned to Skytel Communications, Inc.
Apple, Inc., filed IPR2014-01034 challenging U.S. Patent No. 5,894,506 assigned to Skytel Communications, Inc.
Apple, Inc., filed IPR2014-01035 challenging U.S. Patent No. 5,659,891assigned to Newcastle Partners, L.P.
Apple, Inc., filed IPR2014-01036 challenging U.S. Patent No. 5,915.210 assigned to Mobile Telecommunication Technologies.
Global Foundries U.S., Inc. filed IPR 2014-01042 challenging U.S. Patent No. 7,808,184 assigned to Zond, Inc.
Inspectionlogic Corp., filed IPR 2014-01044 challenging U.S. Patent No. 7,657,384, assigned to LDARtools, Inc.
Nautique Boat Company, Inc. filed IPR2014-01045 challenging U.S. Pat. 8,539,897.
Renesas Electronics Corporation filed IPR2014-01046 challenging U.S. Patent No. 6,853,142 assigned to Zond, Inc.
GlobalFoundries U.S., Inc. filed IPR2014-01047 challenging U.S. Patent No. 7,147,759 assigned to Zond, Inc.
Artsana USA, Inc. filed IPR2014-01043 challenging U.S. Patent No. 8,388,501, assigned to Kolcraft Enterprises, Inc.
Hamilton Storage Technologies, Inc. filed IPR2014-01054 challenging U.S. Patent No. 6,467,285 assigned to the University of Virginia.
Renesas Electronics Corporation filed IPR2014-01057 challenging U.S. Patent No. 6,853,142 assigned to Zond, Inc.
Hamilton Storage Technologies, Inc. filed IPR2014-01058 challenging U.S. Patent No. 6,581,395.
GlobalFoundries U.S., Inc. filed IPR2014-01059 challenging U.S. Patent No. 7,147,759 assigned to Zond, Inc.
Hamilton Storage Technologies, Inc. filed IPR2014-01060 challenging U.S. Patent No. 6,888,123.
Hamilton Storage Technologies, Inc. filed IPR2014-01062 challenging U.S. Patent No. 6,941,762.
June 26, 2014
New Petitions Filed
Taiwan Semiconductor Manufacturing Company, Ltd. filed IPR2014-01038 challenging U.S. Patent No. 8,635,583.
RPC Formatec GmbH filed IPR2014-01040 challenging U.S. Patent No. 8,505,773.
Metrics, Inc. filed IPR2014-01041 challenging U.S. Patent No. 8,129,431 assigned to Senju Pharaceutical Co., Ltd.
Metrics, Inc. filed IPR2014-01043 challenging U.S. Patent No. 8,669,290.
Intitution Decision
In Chrysler Group LLC v. Norman IP Holdings, LLC, IPR2014-00560 (June 26, 2014), the Board terminated the inter partes review based upon the settlement of the parties.
June 25, 2014
New Petitions Filed
Intellectual Ventures II LLC filed IPR2014-01031 challenging U.S. Patent No. 7,848,353,
June 24, 2014
New Petitions
SanDisk Corporation filed IPR2014-01029 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.
Taiwan Semiconductor Manufacturing Company, Ltd. filed IPR2014-01030 challenging U.S. Patent No 5,652,084 assigned to Fortress Credit Co., LLC
Hyundai Mobis Co., Ltd. filed IPR2014-01005 challenging U.S. Patent No. 7,347,450 assigned to Autoliv ASP, Inc.
Hyundai Mobis Co., Ltd. filed IPR2014-01006 challenging U.S. Patent No. 7,614,653 assigned to Autoliv ASP, Inc.
Mandatory Discovery is Only for Information Shown to be Inconsistent
International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent appliaction by petitioner, arguing that petitioner made arguments about the prior art that were inconsistent with its interpretation of the prior art in the Petition. Petitioner objected that the information had previously been produced in a lawsuit between the parties, and that it was unduly burdensome to produce it again. The Board sidestepped the question finding that there was no proof that there were inconsistent statements, and thus the discovery was not mandatory discovery. The Board instructed the Patent Owner to investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation, to the extent permitted. If, after doing so, Patent Owner is unable to obtain the necessary information, Patent Owner is authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).
BRI = Ordinary Meaning, II
In Square, Inc. v. J. Carl Cooper, IPR2014-00157, Paper 17 (June 23, 2014), the Board concluded that in view of the patent expiration, the claims can no longer be amended, and thus they should be constructed according to their ordinary meaning. However, the Board concluded that the application of the Phillips standard did not change the construction of (1) “universal credit card/universal credit card apparatus”; (2) “transducer”; (3) “host system”; and (4) “emitter” as set forth in the Decision to Institute Review. Yet again indicating that the broadest reasonble construction is often the ordinary meaning.
June 23, 2014
Institution Decisions
Johnson Controls, Inc. v Wildcat Licensing WI, LLC, IPR2014-00305 (June 23, 2014), the Board instituted an inter partes review of claims 22-28 of U.S. Patent No. 7,062,831.