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.

May 29, 2014

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Institution Decisions

Pentair Ltd. v. Hayward Industries, Inc., IPR2014-00187, No. 11 (May 29, 2014). the Board instituted inter partes review of claims 1, 2, and 9 of U.S. Patent No. 8,281,425

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00220, Paper 18 (May 29, 2014) the Board instituted inter partes review of claims 1-5, 7-13, 15-20, 25-32, 39-42, 47, and 48 of U.S. Patent No. 7,859,565, but not claims 6, 14, 21-24, 33-28, 43-46, and 49.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00221, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 6, 8-10, 13-15, 27, 29-31, 36, 38, 39, 41-43, and 47-50 of U.S. Patent No. 7,991,522, but not claims 2-5, 7, 11-12, 16-26, 28, 32-35, 37, 40, and 44-46.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00222, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 3, 6, 8-11, 14-16, 18-29, 31, 32, 34, 36-41, 44, 46, and 48-50 of U.S. Patent No. 8,386,114, but not claims 2, 12-13, 17, 33. 35, 45, 47, 53-55, and 59.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00227, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 19 and 25-27, but not claims 1-18 and 20-24 of U.S. Patent No. 7,877,175, consolidating the proceeding and IPR2013-00228 between the same parties and involving the same patent.

 

 

 

May 28, 2014

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Trials Instituted

Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc., IPR2014-00159, Paper 6 (May 28, 2014) the Board instituted inter partes review of claim 1, but not challenged claims 2-5 and 7-9, of U.S. Patent No. 7,343,165.

Trials Denied

Naughty Dog, Inc. v. McRo, Inc., IPR2014-00198, Paper 9, 05/28/2014 the Board denied inter partes review of claims 1-26 of U.S. Patent No. 6,307,576.

 

Dot Your I’s, Cross Your T’s, Measure Your Font, Count Your Line Spacing

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Dynamic Drinkware, LLC v. National Graphics, Inc., IPR2013-00131, Paper 32 (May 2, 2014), the Board expunged the petitioner’s papers that did not comply with Rule 42.6 (37 C.F.R. § 42.6), including by using a 12-point proportional font instead of the 14-point font required by the rule, using an even smaller font in the foot notes, and single spacing (rather than 1.5 line spacing) block quotes.  The Board did give the petitioner five days to submit corrected papers, however,

 

PRPS ate my Petition

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Oracle Corporation v. MAZ Encryption Technologies LLC, IPR 2014-000472 (May 1, 2014), the Board granted petitioner’s request for a March 1 filing date because a PRPS system outage prevented petitioner from completing the filing until March 3.

May 1, 2014

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Institution Decisions

Trulia, Inc. v. Zillow Inc., CBM2014-00115, Paper 8 (May 1, 2014), the Board instituted a covered business method review of claims 2, 5, 15-24, and 40 of U.S. Patent 7,970,674, but not as to claim 25.

Terminations

Voltage Security, Inc. v. Protegrity Corporation, CBM2014-00024, Paper 17 (May 1, 2014), the Board terminated the covered business method review on the joint motion of the parties.

Final Written Decisions

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00052, Paper 88 (May 1, 2014), the Board cancelled claims 11-23 and 26-31 of U.S. Patent No. 7,276,543, but found that claims challenged claims 24, 25, and 32-34 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00051, Paper 81 (May 1, 2014), the Board cancelled claims 1-9 of U.S. Patent No. 6,110,593, and denied the Patent Owner’s motion to amend.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00053, Paper 66 (May 1, 2014), the Board cancelled claims 35, 39, 44, and 53-57 of U.S. Patent No. 7,276,543, but found that 36-38, 40-43, and 45-52 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00050, Paper 77 (May 1, 2014), the Board cancelled claims 1-19 of U.S. Patent No. 6,323,255, and denied patent owner’s motion to amend.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00047, Paper 84 (May 1, 2014), the Board found that claims 1-14 (all the claims) of U.S. Patent No. 6,438,306 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00044, Paper 92 (May 1, 2014), the Board found that claims 1-22 (all of the claims) of U.S. Patent No. 6,961,508 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00043, Paper 95 (May 1, 2014), the Board found that claims 1-18 (all of the claims) of U.S. Patent No. 7,171,103 were not invalid.

St. Jude Medical, Inc. v. The Regents of the University of Michigan,IPR2013-00041, Paper 69 (May 1, 2014), the Board cancelled claims 23 and 25-29 (all of the challenged claims) of U.S. Patent No. 5,746,775.

 

April 30, 2014

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Instituton Decision

Ossur Americas, Inc. v. Otto Bock Healthcare LP, IPR2014-00145, Paper 15 (April 30, 2014), the Board instituted inter partes review of  claims 1-7, 10-13, and 16-23 of U.S. Patent No. 6,726,726.

Final Written Decision

Arthrex, Inc. v. Bonutti Skeletal innovations LLC, IPR2013-00631, Paper 22 (April 30, 2014), the patent owner disclaimed claims 64, 65, 67, 69, 70, 72–76, 80, 82, and 83 in U.S. Patent No. 5,921,986, and the Board terminated the inter partes review.

Linvatech Corporation v. Bonutti Skeletal Innovations LLC, IPR2013-00624, Paper 27 (April 30, 2014),  the Board terminated in the inter partes review on the joint motion of the parties.

 

 

April 28, 2014

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Institution Decision

Twitter, Inc.v. Evolutionary Intelligence LLC, IPR2014-00092, Paper 12 (April 28, 2014), the Board denied institution of inter partes review of claims 1-16 of U.S. Patent No. 7,010,536.

 

No Appeal of a Decision Not to Institute an IPR

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In St. Jude Medical Cardiology Division, Inc., v. Volcano Corp., 2014-1183 (April 24, 2014), an appeal of the denial of inter partes review in IPR2013-00258, the Federal Circuit held that a decision not to institute is not appealable:

We hold that we may not hear St. Jude’s appeal from the Director’s denial of the petition for inter partes review. We base that conclusion on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on our jurisdictional statute read in light of those provisions.

 

The Continuing Problem of Replies Exceeding Their Proper Scope

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In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 27, and IPR2013-00277 (April 23, 2014), the Board again dealt with a patent owner’s motion to strike a petitioner’s reply that the patent owner believes exceeds the scope of petition.  The Board reminded patent owners that it determines whether a Reply and accompanying evidence are outside the scope of a proper Reply and evidence when the parties’ briefs are reviewed and the final written decision is prepared. If there are improper arguments and evidence presented with a Reply, the Board may strike portions or the entirety of the Reply and exclude related evidence. The Board said that it takes under consideration any alleged violations in due course, upon considering the record at the end of the trial.

The Board does not seem to understand that it is not fair to a patent owner not to know what issues are or are not in play at the Oral Hearing, which is why patent owners continue to try to file a motion to strike.

The Board points out that in addition to a motion to exclude, the patent owner can also cross-examine the petitioner’s witnesss, and file a motion for observation on cross-examination, but should a patent owner be put to these steps if the testimony is beyond the proper scope to begin with?

The issue arose a few days earlier in Microsoft Corporation v. Surfcast, Inc., IPR2013-00292 (April 21, 2014) where the patent owner sought permission to file a sur-reply to address what it beleived were improper evidence and arguments in petioner’s reply.  Again the Board said that it would exclude what should be excluded, but again this does not help the patent owner in the oral argument.

April 23, 2014

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New Filings

Petroleum Geo-Services, Inc. filed IPR2014-00678 challenging claim 14 U.S. Patent No. 6,6691,028, assigned to Westerngeco, LLC.

 Final Decisions

In Globus Medical, Inc. v. Altus Partners, LLC, IPR2014-00429 , Paper 10 (April 23, 2014) the Board terminated the trial pursuant to the joint motion of the parties, noting that the patent owner had not yet filed its preliminary statement, and that the litigation between the parties had been resolved.