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.

Use of Evidence in the Patent Owner’s Preliminary Response

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In Greene’s Energy Group, LLC v. Oil States Energer Services, LLC, IPR2014-00216, Paper 7, March 3, 2014, the Board reminded the patent owner that evidence in support of a preliminaryresponse may be submitted, provided that it does not constitute new testimonial evidence.  37 C.F.R. § 42.107(c). The Patent Owner may submit new testimony with Patent Owner’s full response to the Petition.  The Board also cautioned that if a preliminary response is accompanied by a motion to seal, any redacted information cannot be utilized in the Board’s decision to institute a proceeding. Thus the patent owner should narrowly tailor any redactions to the information that is confidential, as well as consider other ways of presenting the confidential information that would not require redaction.  Documents cannot be submitted under seal until a  protective order preserving the confidentiality of designated information is submitted.  37 C.F.R. §§ 42.54-55.

 

Replacing a Certificate of Translation is a Correction of a Clerical Error, Not a Submission of Supplemental Information

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In Medtroinc. Inc., v NuVasive, Inc., [IPR2014-00075], Paper 10 (February 28, 2014), Medtronic wanted to submit a corrected certificate for the translation of Exhibit 1002, but the NuVasive opposed arguing the that corrected certificate was supplemental infomration that could only be submitted after trial had been declared.  The Board considered the corrected certificate, which merely added the perjury warning, would amount to the correction of a clerical error under 37 C.F.R. § 42.104(c), not the filing of supplemental information under 37 C.F.R. § 42.123(a).

Eight Concurrent Petitions Does not Win Sympathy or a Delay

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Most Conduct of Proceeding Orders issued by the Board are unremarkable, but in Mobotix Corp. v, e-Watch, Inc., [IPR2013-00499], Paper 16 (Feburary 28, 2014), the patent owner sought a six month delay in the proceedings because it was involved in a total of eight inter partes review proceedings (only one other involving the currently challenged patent, U.S. Patent No. 7,228,429 (IPR2013-00335)).  The Board rejected the delay, noting that delaying the trial for 6 months would mean it could not be completed within the one-year time period required by statute.

The same trick also did not work in Mobotix Corp. v, e-Watch, Inc., [IPR2013-00498], Paper 13 (Feburary 28, 2014), involving U.S. Patent No. 7,023,913, which is also the subject of IPR2013-00337.

Rehearing Will Only Be Granted Where the Board Misapprehended or Overlooked Something

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 In Ube Maxell Co., Ltd. v. LG Chem, Ltd., [IPR2013-00471], Paper 29, (February 28, 2014) the Board again denied rehearing of one its decisions to Institute Inter Partes Review.  The Petitioner argued that the failure to intstitute a proceeding as to certiain of the assrted grounds was error, and the Board examined each gounds but was not persuaded that it misapprehended or overlooked any argument Ube Maxell actually advanced in the Petition.  The Board instructed that a request “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).

February 20, 2014: Eight New IPR Filings

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Intel Corporation filed five inter partes reviews against the one patent: IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446, IPR2014-00447, all challenge U.S. Pat. 7,147,759 on HIGH-POWER PULSED MAGNETRON SPUTTERING owned by Zond, Inc.  in 443, Intel used 60 pages to challenge claims 1, 4, 10-12, 17, 18 and 44 of the ’759 Patent; in 444 Intel used 60 pages to challenge claims 2, 3, 5-9, 13-16, 19, 41-43 and 45 of the ’759 Patent; in 445 Intel used 60 pages to challenge claims 20, 21, 34-36, 38, 39, 47 and 49 of the ‘759 Patent; in 446 Intel used 60 pages to challenge claims 22-33, 37, 46, 48, and 50 of the ’759 Patent; and in 447 Intel used 54 pages to challenge claim 40 of the ’759 Patent.

Google, Inc., filed IPR2014-00450 against U.S. Pat. 7,921,356, on METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR ADDRESSING HANDLING FROM A COMPUTER PROGRAM, owned by Arendi S.A.R.L.

Edwards Lifesciences Corp., filed IPR2014-00453 against U.S. Pat. 8,623,077 on APPARATUS FOR REPLACING A CARDIAC VALVE, owned by Medtronic, Inc.

Cisco Systems, Inc., filed IPR2014-00454 against U.S. Pat, 5,563,883 on DYNAMIC CHANNEL MANAGEMENT AND SIGNALLING METHOD AND APPARATUS owned by C-Cation Technologies, LLC.

 

 

A Claim Survives IPR!

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The PTAB’s decision in Microsoft Corp. v. Proxyconn, Inc., IPR2013-00026, IPR2013-00109, Paper  73, (February 19, 2014) is notable because for the first time a challenged claim (claim 24) survived the IPR Process, although 8 of the 9 claims for which trial was instituted were found invalid.  This makes the “kill” rate for patent claims in the first eight decisions 110/111 or 99.1%.

The other final written decisions so far are: Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 59 (November 13, 2013) all three of the claims for which trial was instituted were found invalid; Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 66 (January 7, 2014), all 23 of the claims were found invalid, 9 by concession by the patent owner, and 14 by decision of the Board; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00023, Paper 35 (February 11, 2014), all 19 claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00020, Paper 34 (February 11, 2014), all 12 of the claims for which trial was instituted were found invalid. Nicia Corp. v. Emcore Corporation, IPR2012-00005, Paper 68, (February 11, 2014), all 17 claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00019, Paper 33 (February 10, 2014), all 15 of the claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00018, Paper 35 (February 10, 2014), all 13 of the claims were found invalid.

 

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February 13, 2014

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Decision Denying Institution

In Medtronic, Inc. v.Nuivasive, Inc., IPR2013-00504, Paper 8 (February 13, 2014) the Board denied inter partes review because the Petition did not explain how the prior art met the claim limitiations.  The geometry of the prior art did not match the claimed geometry.  The Board continues its careful review of the Petitions.

Settlement: The Point of No Return

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In Blackberry Corporation v. Mobilemedia Ideas, LLC, IPR2013-00036, Paper 64, (January 21, 2014); Blackberry Corporation v. Mobilemedia Ideas, LLC, IPR2013-00016, Paper 31, (December 11, 2013), the parties settled their disputes, and the parties jointly moved to terminate the proceeding.  The Board terminated as to the Petitioner, but determined that it was so late in the proceeding that the inter partes review should continue on desipte the settlement.  It is not clear exactly where it is, but it is clear that there is a point of no return in inter partes review proceedings.

Case Proceeded to Final Decision With a Petitioner; the Consequence of Settlement Too Late

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In Interthinx, Inc. v. Corelogic Solutions, LLC, CBM2012-00007, Paper 58 (January 30, 2014), the Board cancelled the claims 1, 6, 9, and 10 of U.S. Patent No. 5,361,201, even though the parties had reached a settlement, and the trial had already been terminated as to the Petitioner (See CBM2012-00007, Paper 47 (November 12, 2014).  The joint motion to terminate was filed October 25, 2013, a month after the parties had requsted an Oral Hearing, and eight days after the Board issued its Trial Hearing Order, and three days before the scheduled hearing date.  It is not clear precisely when a case has to be settled before the Board will simply dismiss the case, but it is clear that there is a point of no return