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 Advises How to Settle an IPR

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In Commscope, Inc, v. Pangrac and Associates, IPR2013-00461, Paper 11 (March 5, 2014), the Board reminded the parties how to settle an IPR.  Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, explaining that the rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and filed with the Board.  37 C.F.R. § 42.74.

The Board explained that a joint motion must: (1) include a brief explanation as to why termination is appropriate; and (2) confirm the absence of any related district court litigation involving the patent in dispute.  The Board reiterated that the joint motion to terminate must be accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and said that a redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.

The settlement areement can be treated as business confidential 37 C.F.R. § 42.74(c), the parties must file the settlement agreement electronically in the Patent Review Processing System (PRPS) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).  Detailed instructions can be found in FAQ G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp:

G2

March 5, 2014

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New Filings

Medtronic, Inc. filed IPR2014-00487 challenging claims 1-14, 19, 20, and 23-27 of U.S. Patent No. 8,361,156 on Systems and Methods of Spinal Fusion, assigned to Nuvasive, Inc.  As Medtronic explained in its Petition, it presents new arguments and provides new evidence to cure any noted deficiencies in Petitioner’s previously filed petition for IPR, IPR2013-00504, which was denied on February 13, 2014.

You Need a Good Reason to Submit Supplemental Information

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A party seeking to submit supplemental information more than one month after the date the trial is instituted must request authorization to file a motion to submit the information.  The motion must show why the supplemental information reasonably could not have been obtained earlier, and the consideration of the supplemental information would be in the interests of justice.  37 C.F.R. § 42.123(b).  In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00363, Paper 20 (March 5, 2014)  the Board denied Petitioner’s requies to file supplemental information because counsel for Petitioner did not provide a reason sufficient to show why Petitioner cannot submit such evidence in connection with a Petitioner Reply to the Patent Owner Response.  37 C.F.R. § 42.23(b).

 

Don’t Forget the Required Affirmation at the End of Witness Declarations

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37 C.F.R. § 1.68 provides

Declarations may be presented in lieu of an oath: if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

If the required statement is omitted it can, if caught in time, be corrented, but the process set forth in MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274, Paper 15  (March 5, 2014) can be tedious.

March 4, 2014

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New Filings

Oracle Corporation filed IPR2014-00472 against MAZ Technologies LLC, challengnig U.S. Patent No. 7,096,358.

FLIR Systems, Inc. filed IPR2014-00411 against FURRY BROTHERS, LLC, challenging  U.S. Patent No. 8,426,813.

FLIR Systems, Inc. filed IPR2014-00434 against LEAK SURVEYS, INC., challenging  U.S. Paent No. 8,193,496.

Schrader International, Inc., filed IPR2014-00476 against LEEMANN, KARL,RUCHTI, HEINZ, challenging U.S. Patent No. 5,602,524.

Institution Decisions

The Board intiated an inter partes review  in Microsoft Corporation v. Enfish, LLC, IPR2013-00559, Paper 14, as to claims 1-15 and 31-45 of U.S. Patent No. Patent 6,163,775.

The Board intiated an inter partes review  in Microsoft Corporation v. Enfish, LLC, IPR2013-00563, Paper 14, as to claims 16-26, 30, 46-56, and 60 of the U.S. Patent No. Patent 6,151,604, but denying review as to 27-29 and 57-59.

The Board initiated an inter partes review in BUTAMAX™ Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00539, Paper 9, as to  claims 1-9 and 11-19 of U.S. Patent No. 8,273,565.

The Board initaited an inter partes review in GoerTek Electronics, Inc. v. Knowles Electronics LLC, IPR2013-00523, Paper 10, as to claims 1, 2, 4, 5, and 11-13 of U.S. Patent No. 8,121,331.

The Board initaited an inter partes review in Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00538, Paper 8, as to claims 10 and 13 of U.S. Patent No. 5,949,438, but not as to 1, 2, 6, 8, and 11.

 

 

 

 

Board Explains Process for Correcting Exhibits to a Petition

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In an Order for the Conduct of Proceedings in GSI Technology, Inc. v. Cypress Semiconductor Corporation, [IPR2014-00202], Paper 8 (February 27, 2014), the Board explained the process for correcting an Exhibit under  37 C.F.R. § 42.104(c).  After obtaniing authorization from the Board, a petitioner should file a mtion. Petitioner must support themotion with an affidavit setting forth (1) the nature of the error, (2) the manner inwhich the error is corrected, and (3) good cause for granting said motion.  Petitioner should confer with Patent Owner and indicate in its motion whether the motion is opposed. Lastly, the corrected exhibit should be filed as an attachment to the motion. If the Board grants the motion, the replacement exhibit will be entered as such, and the original exhibit will be expunged.

 

Board Explains Observations on Cross Examination

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In an Order for the Conduct of the Proceedings in Atrium Medical Corp. v. Davol, Inc., [IPR2013-00189], Paper 48 (February 28, 2014), the Board advised the patent owner that each item included as an observation on cross-examination should be precise, preferably no more than one short sentence in the explanation of relevance. Observations on cross-examination are not meant to serve the purpose of an argumentative surreply. The relevance of record portions noted, relative to the observed cross-examination testimony, should “jump-out” upon notice. If more than one or two sentences are required to explain such relevance, the observations likely is improper.

An observation (or response) is not an opportunity to raise new issues, to re-argue issues, or to pursue objections. Each observation should be in the following form:

In exhibit __, on page __, lines __, the witness testified __. This testimony is relevant to the __ on page __ of __. The testimony is relevant because __.

The entire observation should not exceed one short paragraph. The Board may decline consideration or entry of excessively long or argumentative observations (or responses). A rule of reason applies to so called “combined” observations of more than one item.

Board Explains Procedure for Filing Supplemental Evidence or Information.

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A party seeking to file supplemental evidence under 37 C.F.R. § 42.64(b)(2) must receive Board authorization to file such evidence, because the rule contemplates serving such evidence, but not filing such evidence. Likewise, a party seeking to file supplemental information under 37 C.F.R. § 42.123, must receive Board authorization to do so.  See, Facebook, Inc, v. Software Rights Archive, LLC, [IPR2013-00478], Paper 26, (March 3, 2014).

March 3, 2014

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Institution Decisions

The Board issued a Decision instituting Inter Partes Review  of U.S. Patent No. 5,796,411 in Xerox Corp. v. RR Donnelley & Sons Co., IRP2013-00529, Paper 15 (March 3, 2014).  IPR was instittued as to claims 2, 4, and 6, but not claims 1 and 3.

The Board issued a Decision instituting Inter Partes Review of U.S. Patent No. 5,921,986 in Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC., IPR2013-00631, Paper 15 (March 3, 2014).  IPR was instituted as to all of the challenged claims: 64, 65, 67, 69, 70, 72–76, 80, 82, and 83.

 

 

Final Decisions

The Board issued a Final Written Decision in CBS Interactive Inc. v. Wireless Science, LLC in IPR2013-00033, finding claims 1, 3-5, 11, 13, 15, 16, 18, 20, 21, 23, 24, 26, 28, 29, 41, 43-45, 51, 53-56, 58, 60, 61, 71, 73-75, 81, 82, 84, 86, 87, 89, 91, 92, and 94 of U.S. Patent No. 7,155,241 invalid.