Trials Instituted
The Board instituted an inter partes review of claims 1-31 of U.S. Patent No. 8,147,514 in Arthrex v. Bonutti Skeletal innovations LLC, IPR2013-00633, Paper 10 (March 21, 2014)
The Board institued an inter parties review of claims 1-6, 8-12, 18-20, 24, and 25 of U.S. Patent No. 6,970,183 (all of the challenged claims), in FLIR Systems, Inc. v. e-Watch, Inc., IPR2014-00139, Paper 12 (March 21, 2014).
New Filings
Samsung Electronics Co. Ltd filed IPR 2014-00514 challenging U.S. Patent No. 8,023,580, assigned to Rembrandt Wireless Technologies, LP.
Mitsubishi Plastics, Inc.filed IPR2013-00524 challenging U.S. Patent No. 6,432,586, assigned to J.P. Morgan Chase (as administrative agent).
Trials Denied
The Board denied an inter partes review in ZOLL Lifecor Corporation v. Philips Electronics North America Corp., IPR 2013-00616, Paper 12 (March 20, 2014) and in IPR2013-00609, Paper 15 (March 20, 2014. The Board found that ZOLL Medical was the real party in interest, and because ZOLL Medical was time barred, and was not disclosed in the Petition, denied inter partes review.
Termination
The Board terminated Samsung Electronics Co., Ltd.v. U.S. Ethernet Innovations, LLC, IPR2013-00384, Paper 16 (March 19, 2014), on the joint motion of the paries, the Board noting that the proceeding still was in the preliminary stages.
New Filings
Oxford Nanopore Technologies Ltd. filed IPR2014-00512 and IPR2014-00513 challenging U.S. Patent No. 6,673,559 assigned to the University of Washington.
New Filings
Stats LLC filed IPR2014-00510 challenging U.S. Patent No. 6,725,107 assigned to Hockeyline, Inc.
A.C. Dispensing Equipment Inc. filed IPR2014-00511 challenging U.S. Patent No. 8,534,497 assigned to A.C. Dispensing Equipment Inc.
Termination
The Board terminated Fifth Third Bank v. Leon Stambler, IPR2014-00244, Paper 9 (March 2014), on the joint motion of the parties. The Board noted the proceeding was still in the preliminary stages, trial not having been initiated.
In comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 16 (March 17, 2014), the Board considered the parties motion to harmonize this inter partes review with a recently filed covered business method review, CMB2014-00071 on the same patent. The Board noted that until the coverned busiess review is granted, further action was premature, but it the Board did not object to the concept of joining an inter partes review and a covered business method review
New Filings
Target Corporation filed IPR2014-00508 challenging claims of U.S. Reissue Pat. RE043,563, and filed IPR2014-00509 challenging claims 1, 2, 5, 6, 10, 11, 15-19, and 24-29 of U.S. Reissue Pat. RE043,531, owned by Destination Maternity Corporation.
Final Written Decisions
The Board issued a final written decision in Denso Corporation v. Beacon Navigation GmbH, IPR2013-00026, Paper 24 (March 14, 2014),holding that claims 2, 3, 5, 6, 11-13, and 18-20 and 22 of U.S. Patent No. 6,029,111 (all of the claims still being contested) were invalid.
Suprisingly the Board granted a reprieve to a petitioner who uploaded the papers, but failed to complete the filing process. In Linvatech Corporation v. Bonutti Skeletal innovations LLC, IPR2013-00624, Paper 22 (March 14, 2014), the Board denied patent owner’s request for rehearing of the Board’s decision to grant Petitioner’s renewed motion to correct the filing date accorded to the petition. Petitioner uploaded the petition on September 25, 2013, but no one clicked the “submit” button until October 2, 2013, more than one year from service of an infringment complaint. In its prelimary response, the patent owner argued the Petition was barrred. The petitioner filed a motion to correct the filing date, which the Board denied with leave to refile. The petitioner filed a renewed motion, which was granted, setting up the instant petition for rehearing by the patent owner.
The Board determined that Petitioner satisfied the statutory and regulatory requirements for filing a complete petition on September 25, 2013, but for clicking the “Submit” button in the Patent Review Processing System, and concluded that Petitioners’ inadvertent delay in clicking the “Submit” button until October 2, 2013, was a clerical error. On rehearing, the patent owner argued that Petitioner is not entitled to relief under 37 C.F.R. § 42.104(c) because it did not admit to making a clerical error. The Board noted that the rule “is remedial in nature and is therefore entitled to a liberal interpretation.” ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013). When, as here, the record supports a finding that a clerical error occurred, the Board may grant appropriate relief under 37 C.F.R. § 42.104(c) whether the party making the error admits to it or not. The Board also found it could grant relief under 37 C.F.R. § 42.5(b) to waive the regulatory requirement that electronic filing is completed only upon clicking the “Submit” button in PRPS.
Accordingly, Patent Owner’s request for rehearing was granted to the extent the Board modified its our prior decision to invoke 37 C.F.R. § 42.5(b), but was denied in all other respects.
Final Written Decisions
The Board issued a Final Written Decision in Liberty Mutual Insurance Company v. Progressive Casualty Insurance Company, CBM2013-00004, Paper 53 (March 13, 2014), holding claims 1-78 of U.S. Patent No. 8,090,598 (all of the challenged claims), invalid.
In Gnosis S.P.A., v. Merck & CIE, IPR2013-00117, Paper 64 (March 12, 2014), the Merck, the patent owner, tried to get the Board to allow it to give a rebuttal argument during the hearing, arguiing that it should be allowed to argue last, even if just briefly, because it bears the burden of proof as to evidence of secondary considerations of nonobviousness. While noting that the argument order may be reversed, such as when the only issue in the case is whether proposed substitute claims are patentable, the Board noted taht Petitioner still had the burden of proving invalidity, including the effect of seconday considerations, such that reordering the proceedings was not appropriate.