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.

A Electronically Published Document Is Not A Printed Publication Unless Others Can Find It

In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0033, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 7-16 and 23-27 were unpatentable, but that claims 1-6 and 17-22 were not.  One of the principal pieces of prior art relied upon by Petitioner  was a technical report published by the Department of Computer Science and Electrical Engineering  of the University of Maryland, Baltimore County more than one year before the earliest priority date claimed.  However the Board found that Petition failed to establish that the technical report was a printed publication.

The Board said that the determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public,” citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry, the Board said, is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date, citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).

The Board noted that Petition had not shown that the report was downloaded or otherwise disseminated, or how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the report.  The Board found that the report was similar to uncataloged theses, citing In re Bayer, 568 F.2d 1357, 1361-62 (CCPA 1978) and In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989).  The Board found that the report was only available for “viewing and downloading” to members of the public who happened to know that it was there, and thus petitioner had not met its burden of showing that the report was publicly accessible

 

December 17, 2014

Institution Decisions (2)

In Mylan Pharmaceuticals, Inc. v. Gilead Sciences, Inc., IPR2014-00886, Paper 15 (December 17, 2014), the Board declined to institute inter partes review of  claims 1–7, 9–14, and 16–18 of U.S. Patent No. 5,935,946.

In Renesas Electronics Corporation v. ZOND, INC., IPR2014-01066, Paper 17 (December 17, 2014), the Board instituted inter partes review of  claims 18–34 of U.S. Patent No. 6,806,652.

Dispositions (2)

In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0033, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 1-5 of U.S. Patent No. 8,457,670 were unpatentable..

In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0034, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 7-16 and 23-27 were unpatentable, but that claims 1-6 and 17-22 were not.

Teaching Away in Reference Prevents Finding of Obviousness

In Ericcsson Inc., v. Intellectual Ventures I LLC, IPR2014-00921, Paper 8 (December 16, 2014), the Board instituted inter partes review of claims 23, 24, 60, and 61 of U.S. Patent No. 6,023,783, but not as to claims 1–5 and 38–42.  The Board concluded that a reference may be said to teach away if it “criticize[s], discredit[s], or otherwise discourage[s]” investigation into a patentee’s claimed invention. DePuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); accord Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“[A] reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.”).

The Board noted that a reference relied upon by petitioner characterizes an element as  “necessary,” and therefore does not convey reasonably that one with ordinary skill would view the element as optional, unnecessary, and, thus, subject to being omitted as discretionary. The Board also found that the Petition did not make any meaningful attempt to explain why a skilled artisan would discount the “necessary” nature of the element

.

December 16, 2014

Institution Decisions (2)

In Ericcsson Inc., v. Intellectual Ventures I LLC, IPR2014-00921, Paper 8 (December 16, 2014), the Board instituted inter partes review of claims 23, 24, 60, and 61 of U.S. Patent No. 6,023,783, but not as to claims 1–5 and 38–42.

In Diablo Technologies, Inc. v. NETLIST, INC., IPR2014-01011, Paper 12 (December 16, 2014), the Board instituted inter partes review of claims 15–17, 22, 24, 26, and 31–33 of U.S. Patent No. 7,881,150.

 

 

Board Declines to Terminate Reexamination

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 and IPR2013-00424m Paper 48 (December 12, 2014), the patent owner sought permission from the Board to file a motion to terminate an ex parte reexamination filed by the petitioner, complaining that it gave petitioner as second bite of the apple.  Because the reexamination had not yet been declared, and because nothing in the reexamination could possibly affect the outcome of the inter partes review, the Board denied the request.

IT DOES APPEAR FROM THIS DECISION THAT A LATE-FILED REQUEST FOR REEXAMINATION IS ANOTHER BITE AT THE APPLE FOR THE PETITIONER; HOWEVER IT ALSO MAY BE AN ESCAPE HATCH FOR A PATENT OWNER TO GET NEW CLAIMS THAT WOULD NEVER BE AVAILABLE IN A MOTION TO AMEND.

December 12, 2014

Dispositions

In Cyanotech Corporation v.  The Board of Trustees of the University of Illinois, IPR2013-00401, Paper 65 (December 12, 2014), the Board issued a final written decision finding claims 1-14 and 26 unpatentable, but not challenged claims 15, 21, and 22.

In Apple Inc. v. Smartflash LLC, CBM2014-00102, CBM2014-00106, CBM2014-00108, and CBM2014-00112 (December 12, 2014), the Board terminated the proceedings on the joint motion of the parties.

December 11, 2014

Institution Decisions

In Fujitsu Semiconductor Limited v. ZOND, INC., IPR2014-00864, Paper 16, (December 11, 2014), the Board instituted inter partes review of claims 18–34 (all the challenged claims) of U.S. Patent No. 6,806,652.

In Taiwan Semiconductor Manufacturing Company, Ltd. v. ZOND, INC., IPR2014-00861, Paper 12, (December 11, 2014), the Board instituted inter partes review of claims 18–34 (all the challenged claims) of U.S. Patent No. 6,806,652.

In Nexsen Pruet, LLC v. Thomson Reuters (Legal), Inc., IPR2014-00854, Paper 7, (December 11, 2014), the Board denied inter partes review of claims 1-13 of U.S. Patent No. 8,412,564.

In VMware, Inc. v. Elec. & Telecomm’n Research Inst., IPR2014-00901, Paper 14 (December 11, 2014) the Board instituted inter partes review of claims 1–9 of U.S. Patent No. 6,978,346.

Dispositions

In Sony Online Entertainment LLC v. Agincourt Gaming, LLC, IPR2014-01232, Paper 10, (December 11, 2014), the Board terminated the proceedings on the joint motion of the parties.

In Sony Online Entertainment LLC v. Agincourt Gaming, LLC, IPR2014-01255, Paper 10, (December 11, 2014), the Board terminated the proceedings on the joint motion of the parties.

Indefiniteness, Lack of Written Description in CMBR and PGR

In Dealer Socket, Inc. v. AutoAlert, Inc., CBM2014-001146, Paper 19 (December 9, 2014), the Board instituted a covered business method review of claims 1, 3–5, 10, 12–14, 16, and 19 of U.S. Patent No. 8,086,529 on grounds of indefiniteness under §112, lack of written description, and patent ineligible subject matter under §101.  DealerSocket is timely reminder to practitioners that invalidity under 35 USC §112 available under covered business method review, as well as its cousin, post grant review.

The indefiniteness challenge centered around the claim language: determining whether: “changed information may affect whether it is favorable for the customer to replace a first vehicle and first financial terms with a second vehicle and second financial terms”.  The Board agreeing with Dealer Socket that “may affect” and favorable” were indefinite:

Given the evidence in this record, we determine that DealerSocket has established that the “may affect” limitation is more likely than not indefinite.  This limitation includes not one, but two terms of degree, “may affect” and “favorable.” Both are highly subjective. The uncertainty is multiplied when one subjective term is used to modify another, as is the case here. Contrary to the argument of AutoAlert, the Specification contains no objective standard for determining reasonably precise boundaries of either term.

The written description challenged focused on the claim language “automatically accessing in real-time, by the computer system, information that has changed.”  The Board noting that the only disclosed embodiment performing retrieval of “changed information” is not associated with the immediate presence of any particular customer, and is not described as occurring in real-time.

However just because you can, doesn’t mean you should.  There is at least the theoretical possibility of fixing some 35 USC §112 defects through amendment, while a successful §112 challenge in court results in invalidity.  Of course, indefiniteness challenges are more likely to be overcome by rewording than the lack of an adequate written description.

December 9, 2014

In HTC Corporation v. E-WATCH, Inc., IPR2014-00989, Paper 6 (December 9, 2014), the Board instituted inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and 31 (“all of the challenged claims”) of U.S. Patent No. 7,643,168

Mistakes to Avoid

Failure to include within the petition an exhibit list with the exhibit number and a brief description of each exhibit. 37 C.F.R. § 42.63(e).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014); SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014) .

Incorrect spacing in petition. Block quotations should be either 1.5 spaced or double-spaced. 37 C.F.R. 42.6(a)(2)(iii).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014); SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014); CoreLogic, Inc. v. Boundary Solutions, Inc., IPR2015-00226, Paper 3, IPR2015-00228, Paper 3 (November 26, 2014).

Incorrect spacing in petition. Footnotes should be doublespaced. 37 C.F.R. § 42.6(a)(2)(iii).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014).

Incorrect font used in the footnotes of the petition. 37 C.F.R. § 42.6(a)(2)(ii)(A).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014) ; SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014) .

Failure to provide a statement identifying how the challenged claims are to be construed, 37 C.F.R. §§42.104(b)(3), 42.405(b)(3)(ii)), including exemplary claim terms and their proposed construction. Stealth Monitoring, Inc. v. Discovery Patents, LLC, IPR2015-00256, Paper 3 (December 2, 2014).