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.

June 6, 2014

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New Petitions

Wright Medical Technology, Inc., filed  IPR2014-00908 challenging U.S. Patent No. 6,440,138 assigned to ORTHOPHOENIX, LLC

Intel Corporation filed IPR2014-00910  challenging U.S. Patent No. 8,595,546 assigned to ZETTASET, INC.

Cisco Systems, Inc.filed IPR IPR2014-00911 challenging U.S. Patent No. 8,134,917 assigned to Constellation Technologies LLC

Wright Medical Technology, Inc., filed IPR2014-00912 challenging U.S. Patent No. 6,863,672 assigned to ORTHOPHOENIX, LLC

Intel Corporation filed IPR2014-00910 challenging U.S. Patent No.6,805,779 assigned to Zond, Inc.

Cisco Systems, Inc. filed IPR2014-00914 challenging U.S. Patent No. 8,464,299 assigned to Constellation Technologies LLC.

Institution Decisions

Syntroleum Corporation v. Neste Oil Oyj, IPR2014-00192, Paper 18 (June 6, 2014) the Board  instituted Inter Partes Reviwe of claims 1-24 (all of the claims) of U.S. Patent No. 8,278,492.

RPX Corporation v. VirnetX Inc., IPR2014-00176, denied Inter Partes Review of U.S. Patent No. 7,418,504, in a confidential dcision.

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Paper 11, (June 4, 2014)denied Inter Partes Review of claims 1, 7, 8, 11, 12, 15, 16, and 30-39 of U.S. Patent No. 7,959,635.

Termination Decisions

CLICK4CARE, INC. v. My Health Inc., IPR2014-00435, Paper 11 (June 6, 2014) the Board terminated the inter partes review on the joint motion of the parties.

 

 

 

Issues of Exceeding the Proper Scope Continue to Plague the Board

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In Ariosa Diagnostics, Inc. v. The Board of Trustees of the Leland Stanford Junior University,  IPR2013-00308, Paper 27 (June 6, 2014) another patent owner was complaining that the Petitioner  had exceeded the proper scope in its reply.  The Board “noted that we understood Patent Owner’s frustration and concern” but reiterated that it will sort out the proper from the improper when making the final written decision.”  In response to the argument that the Board cannot “unread” the improper material, the Board reminde the patent owner that the Board is comprised of “persons of competent legal knowledge and scientific ability,” fully capable of disregarding the portions of the record it is excluding.

June 5, 2014

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New Petitions

Ford Motor Company filed IPR2014-00884 challenging U.S. Patent No. 7,104,347 assigned to Paice LLC.

HTC Corporation IPR2014-000905 challenging U.S. Patent No. 8,400,926 assigned to Patentmarks Communications, LLC.

Institution Decisions

RPX Corporation v. VirnetX Inc.,  IPR2014-00171, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00172, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00174, Paper 50 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00175, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00177, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

 

Board Tells Parties How to File a Request for Rehearing

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Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 98, IPR2013-00044, Paper 96 (June 5, 2014), the Board had difficulty determining what points Corning believed the Board misapprehended or overlooked, and dismissed the request without prejudice.  The Board gave Coring driectino on how to file a request for rehearing:

On page ___ the Final Written Decision states ___. A point that the Decision is believed to have overlooked [or misapprehended] is ___. The point was set forth in ___ Petition [or Reply] _ at page ___. Explain why overlooked or misapprehended point is significant.

A Second Chance on a Motion to Amend

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In Microsoft Corporation v. Surfcast, Inc., IPR2013-00292, Paper 77 (June 5, 2014), the PTAB authorized the patent owner to file a corrected motion to correct what it deemed potential ambiguities in the proposed substitute claims filed in its first motion.  The Board further authorized the petitioner to file up to five pages of additional briefing solely as to the changes introfuced by the corrected motion.

 

June 4, 2014

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Petions Filed

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00885 challenging U.S. Patent No. 5,922,695 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00886 challenging U.S. Patent No. 5,935,946 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00887 challenging U.S. Patent No. 5,977,809 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00888 challenging U.S. Patent No. 6,043,230 assigned to Gilead Sciences, Inc., IPR2013-00466 (June 4, 2014), the Board terminated the proceeding on the joint motion of the parties.

Institution Decisions

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Paper 11, (June 4, 2014)denied Inter Partes Review of claims 1, 7, 8, 11, 12, 15, 16, and 30-39 of U.S. Patent No. 7,959,635

Termination Decisions

Palo Alto Networks, Inc. v. Juniper Networks, Inc.,

Ikaria, Inc. v. GENO LLC, IPR2013-00253, Paper 28 (June 4, 2014), the Board entered judgment against the patent owner in response to a request by the patent owner.

 

Motion for Discovery Denied as Moot

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GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041) Paper 38,  (IPR2014-00043), Paper 37, (IPR2014-00051), Paper 36. (IPR2014-00054), Paper 35, (IPR2014-00055), Paper 29  (June 3, 2014), the Board denied patent owners requet for discovery about the real party in interest in viiew of the Petitioner’s agreement to provide the requiested information.

 

June 3, 2014

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New Filings

Excelsior Medical Corporation filed IPR2014-00880 challenging U.S. Patent No. 8,740,864.

Institution Decisions

PNC Bank, N.A. v. Maxim Integrated Products, Inc., CBM2014-00038, Paper 19, CBM2014-00039, Paper 19, CBM2014-00040, Paper 19,  CBM2014-00041, Paper 19 (June 3, 2014) , the PTAB declined to instaitute a covered business method review because one of the petitioners had challenged the validity of the patent before the filing of the petition, and this could not be resolved by that party agreeing to take an adverse judgment.

Amneal Pharmaceuticals, LLC v . Endo Pharmaceuticals Inc.,  IPR2014-00160 (June 3, 2014), the Board instittued trial as to claim 4 of U.S. Patent No. 7,851,482 B2.

 

Rehearing Round Up

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Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 11  (June 3, 2014) (denying rehearding on refusal to institute trial)

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 25 (June 3, 2014) (denying rehearing on refusal to institute trial on certain grounds).

Alcon Research, Ltd. v. Joseph Neev,  IPR2014-00217, Paper 23 (June 2, 2014) (denying rehearing on refusal to institute trial on certain grounds).

GoerTek Electronics, Inc. v. Knowles Electronics, LLC., IPR2013-00523, Paper 26 (May 30, 2014)(denying rehearing on refusal to institute trial on alternative grounds).