in BioMarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited Partnership, IPR2013-00534, Paper 32, IPR2013-00537, Paper 31 (April 11, 2014), the patent owner sought to take video cross examination of the petitioner’s experts. The Board said that by recording the deposition, Patent Owner is only preserving an opportunity for the panel to review the video, and authorized the video taping of the depositions at Patent Owner’s expense. The board pointed out that the authorization did not extend to the filing of the video-taped deposition transcripts, for which separate authorization is required under 37 C.F.R. § 42.53.
Author Archives: Bryan Wheelock
Getting a Word in Edgewise
The Board has been stingy granting additional pages for submissions, but in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00345, Paper 32 (April 11, 2014) the Board granted petitioner an additional 5 pages to respond to the Patent Owner’s response in view of the large volumne of evidence of commercial success presented by the patent owner (who did not object).
April 11, 2014
New Filings
FLIR Systems, Inc., filed IPR 2014-000608 challenging claims 1-58 of U.S. Patent No. 8,426,813, assigned to Furry Brothers LLC/ Leak Systems, Inc.
FLIR Systems, Inc., filed IPR 2014-000608 challenging claims 1-7 and 9-20 of U.S. Pat. No. 8,193,496, assigned to Furry Brothers LLC/ Leak Systems, Inc.
What to Do When A Reply Exceeds its Proper Scope
In addition to handing a patent owner the first outright win in an inter partes review, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), the Board outlined the proper way handle a reply or rebuttal evidence that exceeds its proper scope (hint: it’s not a motion to exclude). The Board said that If an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.
The First (and Second) Outright Win for the Patent Owner
In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to show that claims 1 -10 of U.S. Patent No. 6,516,236 were invalid. In a decision the same day in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), the patent owner repeated the feat, saving claims16-30 and 46-59 of U.S. Patent No. 8,073,557.
In part petitioner came up short, by not adequately rebutting the testimony of the patent owner’s expert. In an interesting tactic, during cross examination of petitoner’s expert, patent owner presented a list of disagreements with patent owner’s experts, which petitioner’s expert identified as “accurate,” but which did not include four claim elements that patent owner’s expert testified were missing from the prior art, causing the Board to conclude that the rebuttal testimony did not establish that the testimony of patent owner’s expert should not be credited. In the latter decision, the Board also criticized petitioner for failing to specifically identify any specific element or feature disclosed in prior and and instead arguing what “ordinary artisans would recognize.” Argument is not a substitute for disclosure.
No 102(e) Prior Art in a CBMR
In Trulia, Inc, v. Zillow, Inc., CBM2013-00056, Paper 19 (April 10, 2014), it was called to the Board’s attention that the prior art relied upon in the petition was 102(e) which is not proper prior art for a covered business method review. The petitioner pointed out that each reference had a corresponding publication that was 102(b) prior art, but the Board found that it could not change the grounds on which the trial was instituted, and intead suggested that the petitioner file an second petiton, replacing the 102(e) art with the 102(b) art, and move to join the proceedings. While the time for joinder passed the day of the Board’s order, the Board said it would waive the joinder deadline if both parties were amenable,
Marathon Cross Examination
In Facebook Inc. v. Software Rights Archive, LLC, IPR2013-00479, Paper 28 (April 9, 2014) the patent owner asked for leave to cross-examine petitioer’s expert witness for a total of 14 hours, in view of the fact that there were four separte petitions challenging three patents. The petitioners objected. The Board noted that unless stipulated by the parties or ordered by the Board, cross-examination shall be subject to a seven hour time limit. 37 C.F.R. § 42.53(c)(2). However, as the patent owner noted, the petitioner’s expert was a declarant in four proceedings, i.e., IPR2013-00478, IPR2013-00479, IPR2013-00480, and IPR2013-00481. The Board concluded that the patent owner’s request for more than seven hours was reasonable, and granted patent owner up to fourteen hours for cross-examination.
Can’t Sneak in Another Argument
In Rackspace Hosting, Inc. v. Rotatable Technologies, LLC, IPR2013-00248, Paper 27 (April 9, 2014), the petitioner submited a seven page requiest for oral argument including arguments, The Board noted that while a request may provide a short list of arguments to be raised, detailed briefing is not proper in the request, and therefore expunged the paper, after duly noting the request for oral argument.
Experts and Redundant Prior Art
In DeLaval International AB v. Lely Patent N.V., IPR2013-00575, Paper 18 (April 9, 2014), the patent owner objected the petitioner’s expert declaraton that referred to prior art that was not part of the instituted grounds (because of redundancy). The Board solved the problem by allowing the petition to submit an updated expert declaration.
April 8, 2014
Petitions Filed
Luxottica Retail North America, Inc., filed IPR2014-00593 challenging claims 1-7, 9, 12, 14, 15 and 17-19 of U.S. Patent No. 6,624,843 assigned to Lennon Image Technologies LLC.
Trials Intituted
In Google Inc. v. Unwired Planet, LLC, CBM2014-00006, Paper 11 (April 8, 2014), the Board instituted a covered business method review against claims 25-29 (all of the challenged claims) of U.S. Patent No. 7,203,752.
In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00073, Paper 14 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24, 30, and 33-37 of U.S. Patent No. 8,192,356, but not as to challenged claims 25 and 26.
In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00074, Paper 15 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24-26, 30, and 33-37 (all of the challenged claims) of U.S. Patent 8,192,356.
In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00076, Paper 13 (April 8, 2014), the Board refused to institute an inter partes review against claims 1, 2, 4, 5, 10, 15, 17, and 18 of U.S. Patent No. 8,016,767.
In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00081, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.
In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00087, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.
In Google v. Unwired Planet, LLC, CBM2014-000005, Paper 10 (April 8, 2014), the Board instituted a covered business method review against claims 1-6 of U.S. Patent No. 7,024,205.
In Google v. Unwired Planet, LLC, IPR 2014-00037, Paper 9 (April 8, 2014), the Board instituted an Inter Partes Review against claim 25, but not dependent claims 26–29, of U.S. Patent No. 7,203,752
In Google v. Unwired Planet, LLC, IPR 2014-00036, (April 8, 2014), the Board instituted an Inter Partes Review against claims 1-6 of U.S. Patent No. 7,024,205.