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

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.

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

.

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.

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.

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

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).