In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01027, Paper 16, (December 22, 2014) the Board declined to institute inter partes review of claims 13–20, 25, and 36 (the “challenged claims”) of U.S. Patent No. 6,020,980.  In addressing the merits of the petition the Board quoted the Petition that the references “are clearly properly combinable and are representative of the obvious body of knowledge well within the grasp of the person of ordinary skill in the art in the field of the ’980 Patent.” The Board, observed that “This statement, by itself, does not provide any rationale for combining the cited teachings and certainly does not provide a sufficiently “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” The Board complained that “Petitioner does not explain persuasively how or why a person of ordinary skill would have combined the cited teachings. The Board acknowledged that the Petition was supported by an expert declaration, but said the declaration, like the Petition, “only offers conclusions that it would have been obvious to combine certain teachings from each of the references” and does not provide any support for the conclusions with persuasive explanation or citation to objective evidence.

In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01028, Paper 13, (December 22, 2014) the Board declined to institute inter partes review of claims 1–12, 21–24, 26–35 (the “challenged claims”) of U.S. Patent No. 6,020,980.  The Board noted that Petitioner’s challenge of claims 1, 22, and 26 is based upon substantially the same prior art and arguments that were before the Office in the ex parte reexamination of the ’980 patent—Control No. 90/012,650—that resulted in Ex Parte Reexamination Certificate (9670th) issued May 20, 2013 (Ex. 1002). Accordingly, the Board exercised its discretion to decline to institute inter partes review.

In Volkswagen Group of America, Inc. v. EmeraChem Holdings, LLC, ORP2014-01556 (December 22, 2014), the Board authorized the Petitioner to file a Motion to Correct its filings, and authorized the patent owner to responds.  The Petition required on several foreign language references, and while the Petition included an English translation of the references, it failed to include the required certification that the translation is accurate.

This is a good reminder that when relying upon foreign language references, 37 C.F.R. § 42.63(b) requires that foreign language documents be translated to English and include an affidavit attesting to the accuracy of the translation.

In TD Bank Group v. Global Session Holdings SRL, IPR2014-01356, Paper 10 (December 22, 2014), the Board considered what is a clerical error in deciding whether to allow petitioner to correct alleged clerical errors in its filings.  Among the many errors petitioner sought to correct was the name of the patent owner.  It appeared that petitioner relied upon the abstract of title available on the USPTO website, without noticing that the recorded document as listed as a “license” rather than assignment.  While patent owner did not object to correctly listing the patent owner in the caption, it argued that the error was not clerical.  The Board agreed, noting petitioner listed the exclusive licensee as the patent owner based on its review of the assignment records, even though these records indicate the agreement between Global Sessions LP and Global Session Holding is a “License.” The Board concluded that while there may have been an error in determining ownership of the patent, that error was not clerical or typographical in nature. Accordingly, it denied petitioner’s request to correct the caption of the Petition.  The effect petitioner’s motion to correct was actually an attempt to substitute parties.  Petitioners must be very careful when reviewing the USPTO’s assignment records, which are confusing.

Institution Decisions (1)

In Cisco Systems, Inc.v. Constellation Technologies LLC, IPR2014-00871, Paper (December 19, 2014), the Board instituted inter partes review of claims 1–25 and 34–41 of U.S. Patent No.6,845,389.

In Universal Remote Control, Inc. v. UEI Cayman Inc., IPR2014-01082, Paper 9 (December 18, 2014), the Board declined to institute inter partes review of claims 2, 5, 22, and 23 of U.S. Patent No. 7,589,642.  Petitioner argued that a claim limitation was inherent in all of the cited references.  The Board explained that “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).  The Board noted that petitioner’s only support was the conclusory declaration of its expert.  The Board said that conclusory statements that are without factual or evidentiary support are insufficient, citing 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Lacking any other proof of inherency, the Board could not determine that the element was in fact inherent in the prior art, and declined to institute inter partes review.

In Organik Kimya San. ve Tic. A.S. v. Rohm And Haas Company, IPR2014-00185, Paper 42 (December 18, 2014), the Patent Owner was denied permission to file a motion to compel the deposition of the declarant in a declaration submitted by the Petitioner in opposition to the Motion to Amend.  The Declaration was from a separate ITC proceeding between the parties, so the Board agreed that the deposition was not Routine Discovery under 37 C.F.R. § 42.51(b)(1)(ii).  However, the Board cautioned petitioner that the Declaration “may be entitled to little or no weight, as it has not been subject to cross-examination as it pertains to the instant proceeding.”  The Board then sent the parties off to work things out, instructing the Patent Owner to renew the motion if agreement is not reached.

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Institution Decisions (2)

In Universal Remote Control, Inc. v. UEI Cayman Inc., IPR2014-01082, Paper 9 (December 18, 2014), the Board declined to institute inter partes review of claims 2, 5, 22, and 23 of U.S. Patent No. 7,589,642.

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00660, Paper 24 (December 18, 2014), the Board instituted inter partes review of claim 30 of U.S. Patent No. 5,745,574.