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.

The Board is Hesitant to Stay Proceedings

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In International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049, CBM2013-00050, and CBM2013-00051, Paper 19, (March 28, 2014), the Board declined to stay there covered business method reviews so that they might be synced up with three inter partes reviews.   The Board noted that if the inter partes reviews weren’t instituted, alot of time would be wasted, and if they were instittued, the resulting schedule woudl make it difficult for the Board to render a final written decision within one year of the institution of the covered business method reviews.

 

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Petiioner Can Submit Supplemental Information Challenging Additional Claims

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In Callidus Software Inc. v. Versata Software, Inc., CBM2013-00052, Paper 26, CBM2013-00053, Paper 21, CBM2013-00054, Paper 24 (March 28, 2014), Petitioner sought to file supplemental infomration to challenge dependent claims not challenged in the Petitions. The Board determined that considering the supplemental information would not be in the interests-of-justice, because it would create a trial within a trial, requiring briefing by the Petitioner, an opposition by the Patent Owner, and a reply by Petitioner. Moreover, there would need to be time to allow for cross-examination of any witness providing testimony as to the issues raised. All of this would impact the current schedule, and would not lead to a just, speedy, and inexpensive proceeding pursuant to 37 C.F.R. § 42.1(b).  The Board noted that Petitioner could still file new petitions raising the new issues.

March 27, 2014

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Final Written Decisions

The Board issued a final written decision in Kyocera Inc. v. Softview LLC, IPR2013-00004 and Case IPR2013-00257, Paper 53 (March 27, 2014) finding claims 30, 31, 40, 41, 43, 52, 55, 59, 72, and 75 (all of the challenged claims) of U.S. Patent No. 7,831,926 are unpatentable under 35 U.S.C. § 103.

The Board issued a final writen decision in Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034, Paper 42 (March 27, 2014), finding claims 2, 5-11, 13-17, 26, 28-33, 35-37, 39, and 40 unpatenable, but finding claims12, 27, 34, and 38 of U.S. Patent No. 7,970,674 patentable.  Petitioner had originally sought review of all 40 claims, but trial was only instituted as to 2, 5-17, and 26-40.

 

Petioner’s Reply May Only Respond to the Patent Owner’s Arguments

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In Amkor Technology, Inc. Tessera, Inc. IPR2013-00242, Paper 106 (March 27, 2014) the Board authorized the patent owner to file a Motion to Strike the petitioner’s reply on the grounds that it contained new matter.  A reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012).

The Board found that the patent owner has made a threshold showing that petitioner in its reply is relying on a different embodiment of the reference from that which was relied on in the petition, adn thus briefing from the parties is warranted to determine whether the reply arguments properly respond to Patent Owner‟s response.

No Relief for Patent Owners

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In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402, IPR2013-00403 Paper 22, (March 27, 2014), the Patent Owner also requested five additional pages for each of its motions, arguing that its proposed substitute claims occupy a significant portion of the 15 pages allotted. The Petitioner did not oppose Patent Owner’s request, but the Board nevertheless denied it, saying:

We do not view the issues involved in these proceedings to be overly complex, or the claims to be so voluminous, such that it would be unreasonable for Patent Owner to meet the 15-page limit for motions to amend. See 37 C.F.R. § 42.24(a)(1)(v). Patent Owner is encouraged to propose focused amendments for a limited set of claims and use the bulk of its motion to explain why the motion should be granted.

Whether or not the amendments are focused does not really address the patent owner’s plight that reproducing the text of the claims takes up a substantial portion of the allotted fifteen pages.  Also, whether or not the Board sees the issues as complex, the fact remains that 15 pages has not been enough for a single patent owner to success in amending even one claim.

March 26, 2014

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Institution Decisions

The Board instituted an inter partes review in Apple Inc. v. PersonalWeb Technologies, LLC., IPR 2013-00596, Paper 9 (March 26, 2014) of claims 24, 32, 70, 81, 82, and 86 (all of the challenged claims) of U.S. Patent No. 7,802,310.

The Board instituted an inter partes review in Laird Technologies, Inc., v. GrafTech International Holdings Inc., IPR2014-00023, Paper 11 (March 26, 2014) of claims 1, 2, 21-24, and 26-29 of U.S. Patent No. 6,482,520.

March 25, 2014

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Institution Decisions

In Regions Financial Corporation v. Retirement capital Access Management Company LLC, CBM2014-00012, Paper 16, (March 25, 2014) the Board instituted a CBM against U.S. Patent No. 6,625,582., whihc was also the subject of CBM2013-00014.

Termination Decisions

In Raymarine, Inc. v. Navico Holding AS, IPR2013-00497, Paper 17 (March 25, 2014), the Board terminated in the IPR in view fo the joint motion filed by the parties.  The Board noted that it instituted trial on February 11, 2014, and that it did not have before it full briefing on the trial issues and the Board has not entered a final decision, and thus it was appropriate to enter judgment without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72

 

Joinder Denied, But Requirements Explained

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In Regions Financial Corporation, v. Retirement Capital Access Management Company, LLC, CBM2014-00012, Paper 17 (March 25, 2014) the Board denied a motion to join the case with CBM2013-00014 because under the circumstances, joinder would have a significant adverse impact on the Board’s ability to complete the existing proceeding in a timely manner.  The Board noted that oral argument had already been schedule in the first CBM.

The Board outlined the showing required in a motion for Joinder

As the moving party, Petitioners have the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See e.g. Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013).

 

 

 

 

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‘Till Death Do Us Part

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In Fandango, LLC v, Ameranth, Inc., CBM2014-00013 Paper 22 (March 24, 2014), Apple learned the hardway the downside of filing a joint petitioner for covered busness method review:  The Board will only a permit single representation.  This not only restricts the choice of counsel, but it affects the choice of arguments. The joint parties cannot take different, let alone inconsistent positions, because they are one petitioner, represented by a single counsel.  While you save on filing fees, you lose on the ability to control the arguments presented.  Joint Petitioners should think carefully about marriage (and probably have a iron-clad pre-nup).

March 24, 2014

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Institution Decisions

In Aker Biomarine AS v. Neptune Technologies and Bioressources Inc., IPR2014-00003, Paper 22 (March 24, 2014) the Board instituted an inter partes review of claims 1-6, 9, 12, 13, 19-29, 32, 35, 36, and 42-46 of U.S. Patent No. 8,278,351.  ALthough the petition was filed against all 94 claims in the patent, the parties stiputed to a limitation of the proceedign to the claims for which the Board instituted trial.