In Eastman Kodak Company v. RR DONNELLEY & SONS COMPANY, IPR2014-00788, Paper 3, IPR2014-00789, Paper 3, IPR2014-00790, Paper 3, IPR2014-00791, Paper 3,(June 3, 2014). the Board reminded petitioners that footnotes, like the rest of the text of a Petition, must be double spaced. Petitoner was given five days to make a correct.
Author Archives: Bryan Wheelock
Demonstrative Exhibits Are Proper If the Quote Filed Papers
In Hewlett-Packard Company v. MCM Portfolio LLC, IPR2013-00217, Paper 29 (June 3, 2014) the Board discussed Demonstrative Exhibits:
Demonstrative exhibits are merely visual aids to a party’s oral presentation at the final oral hearing, and are not evidence. They may not include new argument or evidence. See CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 at 3-4 (Oct. 23, 2013).
Petitioner objected to Patent Owner’s slides 7-11 address Petitioner’s arguments that were not addressed in the patent owner’s response and that Patent Owner will use those slides as a basis to present new arguments at the oral hearing. Petitioner confirmed that each of Patent Owner’s slides at issue does not contain new argument or evidence, but rather merely quotations from the petition. As such, the Board informed the parties that Patent Owner may use its demonstrative exhibits at the oral hearing.
The Board advised the parties to utilize their oral hearing time efficiently by only presenting arguments relied upon in the substantive papers previously submitted (e.g., the petition and patent owner response). Whatever a party desires to present should already have been presented in the party’s papers.The Board noted that the parties should act with courtesy and decorum at the oral hearing. See 37 C.F.R. § 42.1(c).
Board Finds that Parties’ Agreement on Service of Complaint Controls When Service was Effective
TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2014-00251, Paper 13, IPR2014-00255, Paper 16, IPR2014-00256, Paper 15,IPR2014-00257 Paper 15, IPR2014-00258; Paper 15, IPR2014-00259 Paper 18, IPR2014-00260; Paper 18, IPR2014-00261 Paper 18, IPR2014-00262; Paper 14, IPR2014-00263 Paper 14, IPR2014-00264; Paper 14, IPR2014-00265, Paper 14, IPR2014-00266, Paper 16 (June 2, 2014). The parties had entered into an agreement that service would be effected by email and Federal Express on December 17, but the patent owner emailed and federal expressed the Summons and Complaint on December 14. Because these were not authorized methods of service, the Board determined that they were not effective until December 17, when the agreement of the parties authorized such service. Thus the Board concluded that the petitions were timely filed within one year of service fo the Complaint.
Waiting for Alice
Callidus Software Inc. v. Versata Development Group, Inc., CBM2013-00052, CBM2013-00053, Paper 28, CBM2013-00054, Paper 32 (June 2, 2014), the Board agreed to extend the due dates, provided that the patent owner waived its right to file a motion to amend, agreeing with the patent owner that the additional time would allow the parties to take into account any decision made by the Supreme Court in Alice Corp.v. CLS Bank Int’l, et al., Docket No. 13-298 (2014).
June 2, 2014
Petitions Filed
JST Performance, Inc. d/b/a/ Rigid Industries filed IPR2014-00874 challenging U.S. Patent No. 6,250,774 assigned to U .S. PHILIPS CORPORATION
Apotex Corp.filed IPR2014-00876 challenging U.S. Patent NO. 6,417,191 assigned to VIIV HEALTHCARE UK LIMITED.
Homeland Housewares, LLC filed IPR IPR2014-00877 challenging U.S. Pat. 7,581,688 assigned to WHIRLPOOL CORPORATION
Seoul Semiconductor Co., Ltd filed IPR2014-00878 challenging U.S. Pat. 8,227,969 assigned to ENPLAS CORPORATION.
Seoul Semiconductor Co., Ltd filed IPR2014-00879 challenging U.S. Pat. 7,798,679 assigned to SHARP KABUSHIKI KAISHA and ENPLAS CORPORATION
Institution Decisions
Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, IPR2014-00321, Paper 13 (June 2, 2014), the Board instituted an Inter Partes Review as to claims 40-42 and 44-47, but not claim 43, of U.S. Patent No. 7,806,896.
Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2014-00191, Paper 12 (June 2, 2014), the Board instituted an Inter Partes Review as to claims 15-22, 26-28, and 31-36, but not claims 23-25 of U.S. Patent No. 7,837,736.
Wright Medical Group, Inc.v. Bonutti Skeletal Innovations LLC, IPR2014-00354, Paper 10 (June 2, 2014) the Board instituted an Inter Partes Review as to claims 1 and 40, but not claims 13 and 25, of U.S. Patent No. 7,806,896.
Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00179, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 1, 2, 5, 9-12, 15, and 19 of U.S. Patent No. 7,124,646.
Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00178, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 1-12 of U.S. Patent No. 7,136,761.
Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00178, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 17, 21, and 36, but not claims 24-26, of U.S. Patent No. 6,311,136.
Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00167, Paper 10 (June 2, 2014), the Board granted inter partes review of claims 1, 6-8, 13-15, 20, and 21 of U.S. Patent No. 7,505,854.
Final Decisions
Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90, June 2, 2014) the Board found that claims 1-12 and 17-19 (all of the challenged claims) of U.S. Patent No. 6,173,403 were unpatentable.
Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00081, Paper 80, June 2, 2014) the Board found that claims 1-4 (all of the challenged claims) of U.S. Patent No. 5,982,889 were unpatentable.
Board Explains How to (and Who Should) File a Redacted Transcript
In ACCO Brands Corporation v. Fellowes, Inc., IPR2013-00566, Paper 21 (May 30, 2014), the Board resolved how to handle the filign of a redacted transcript. The Board diecided that the party wantign the redcations should file the transcript, and while the party takign the deposition should file the Exhibits, so that are correctly numbered.
Live On Stage!
In K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 36 (May 30, 2014), the Board reconsidered and modified its previous order allowing live testimony of the inventor. On the patent owner’s motion, the Board previous ordered that the inventor live testimony would be received, consisting of 30 minutes of cross-examination by petitioner, followed by 30 minutes of redirect by patent owner. The petitoner objected to this arrangement, arguing that it had nothing new to ask the inventor. The Board rearraged the hearing so that the patent owner was allowed up to 30 minutes of direct testimony, followed by up to 30 minutes of cross examination by petitioner, with the Petitioner being entitled to use ot to 30 minutes of video recording of Mr, Orr’s deposition testimony.
While it is encouraging to see the Board allow for alternative hearing formats,the value os such live testimony is dubious, since the direct testimony “will be strictly limited to his declaration testimony,” and it puts petition in a awkward position of having to desigate cross examination testimiony in advnace of the direct testimony. It wil be interesting to see how the June 17, 2014, final hearing goes.
May 30, 2014
Institution Decisions
First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc., IPR2014-00169, Paper 8, (May 30, 2014), the Board instituted inter partes review of claims 15-22 (all of the challenged claims) of U.S. Patent No. 8,579,876.
Dispositions
comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 20 (May 30, 2014), the Board granted the parties joint motion to terminate the inter partes review.
Claim Charts May Contain a Concise Summary fo the Disclosure of a Reference
Ericcson, Inc.v. Intellectual Ventures I LLC, IPR2014-00527 May 30, 2014), the Patent Owner charged that petitioner’s claim charts contained impermissible argument. The Board disagreed, explaining that it was permissible to summarize the relevant disclosure of a reference:
We do not discern, however, that the claim charts include content that is prohibited. Although quotations from a prior art reference are permitted, and, in many cases, may be preferable, Board rules do not mandate such quotation to the exclusion of other qualified indications of how the prior art teaches the limitations of a claim. To that end, there is no prohibition on the use of a concise summary of the disclosure of a reference as an alternative to quotation from the reference in an element-by-element showing. That Ericsson’s claim charts include summary of the disclosure of the involved references beyond strict quotation does not, in our view, present improper content in the claim charts. We also do not discern that, in this case, the brief introductory or expository phrases that precede expression of the disclosure of a reference in connection with a claim element rise to the level of “argument” that must be excluded from a claim chart.
Board Continues to Defer Decisions on Motion to Strike
In Distinctive Developments, Ltd. Uniloc USA, Inc., IPR2013-00391, Paper 26, (May 29, 2014), the Board denied patent owner a motion to strike the petitioner’s reply as exceeding its proper scope, explaining that the propriety of the reply would be considered by the Board.