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.

Hell Hath No Fury Like a Patentee Scorned

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In SAP America, Inc. v. Arunacgalam, IPR2014-00413, Paper 23, and IPR2014-00414, Paper 21 (December 5, 2014), the Board sanctioned pro se patent owner for her unauthorized filings in which she makes “bald, unsubstantiated allegations” against one of the PTAB Judges, states that she is reporting the Judge to various ethics committees, and seeks recusal and requests that all previous decisions negative to Patent Owner be reversed.  After numerous improper filings, a clearly frustrated board sanctioned the patent owner: expunging the papers; terminating patent owner’s access to upload documents to the Patent Review Processing System (PRPS) for all proceedings is terminated; prohibiting her from accessing, or attempting to access, PRPS to upload documents under a different name or thorough any real or corporate person, party, entity, agent, or successor in interest, other than qualified lead counsel; requiring any qualified lead counsel who wishes to represent a party opposing a challenge to a patent in which the Patent Owner has an interest must first contact the Board to obtain permission to use PRPS to upload filings in that proceeding; and requiring her to file documents by mail, but only after first obtaining authorization of the Board.  Finally, the Board ordered her to comply with all other rules and procedures applicable to proceedings affected by this Order.  The Board warned that any unauthorized filings by will be expunged in their entirety upon receipt.

 

 

And Another Thing

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In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion to file a Supplemental Declaration of its expert, with additional reasons to combine the references.

The Board said that although a party may meet the requirements laid out in 37 C.F.R. § 42.123 so as to obtain authorization to file a motion to submit supplemental information, that does not, itself, guarantee that the motion will be granted. The provision for submitting supplemental information is not intended to offer a petitioner a routine avenue for bolstering deficiencies in a petition raised by a patent owner in a Preliminary Response.

The Board observed that “The supplemental testimony does not operate to change any grounds of unpatentability that were authorized in this proceeding, nor does it change the type of evidence initially presented in the Petition to support those grounds of unpatentability. Rather, as urged by PMI, the supplemental testimony is offered simply as ‘additional evidence that [in PMI’s view] confirms the prima facie obviousness of claims 16–19 as set forth in PMI’s petition.'”

Nothing that, as Patent Owner suggested, the information might be included with petitioner’s reply, the Board concluded that “[m]aking the Supplemental Declaration of record now increases the likelihood that the record will be developed more fully with a minimum number of depositions and without additional motion practice.”

 

 

 

December 2, 2014

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New Filings

Fike Corporation filed IPR2015-00341 challenging U.S. Patent No. 8,674,260, assigned to U.S. Patent No. 8,674,260.

Institution Decisions

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00131, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-15 of U.S. Patent No. 7,533,056.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00135, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-56 of U.S. Patent No. 6,772,132.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00136, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-40 of U.S. Patent No. 6,766,304.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00137, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-19 of U.S. Patent No. 7,685,055.

Dispositions

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00397, Paper 19, IPR2014-00400, Paper 22 (December 2, 2014), the Board terminated the inter partes reviews on the joint motions of the parties.

In ABB Technology Ltd. v. IPCO LLC, IPR2013-00482, Paper 35, IPR2014-00147 (December 2, 2014), the Board terminated the inter partes review on the joint motion of the parties.

December 1, 2014

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New Filings

Tissue Transplant Technology Ltd. filed IPR2015-00320 challenging U.S. Patent No. 8,709,494, assigned to Surgical Biologics, LLC.

FramedHere, LLC filed IPR2015-00333 challenging U.S. Patent No. 8,533,992, assigned to Just Greens, LLC

Institution Decisions

In McClinton Energy Group LLC v. Magnum Oil Tools International, Ltd., IPR2014-00993, Paper 14 (December 1, 2014), the Board instituted inter partes review of claims 1–38 of U.S. Patent No. 8,459,346.

In Torrent Pharmaceuticals Limited v. Novaritis, IPR-00784, Paper 11 (December 1, 2014), the Board instituted inter partes review of  claims 1–32 of U.S. Patent No. 8,324,283.

In BlackBerry Corporation v. Cypress Semiconductor Corporation, IPR2014-01496, Paper 11, IPR 2014-01470, IPR 2014-01483, IPR 2014-01488, IPR 2014-01492, IPR 2014-01495 (December 2, 2014), the Board granted the parties joint motion to terminate.

In Commerce Bancshares, Inc. v. Intellectual Ventures II LLC, IPR2014-00793, Paper 7 (December 2, 2014), the Board declined ot institute inter partes review of claims 1–10 and 12–33 (the “challenged claims”) of U.S. Patent No. 6,715,084.

In Brainlab AG v. Sarif Biomedical LLC, IPR2013-00753, Paper 14 (December 1, 2014), the Board terminated the inter partes review on the joint motion of the parties.

 

 

Rehearing Round-up

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Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 27 (November 21, 2014) the Board denied rehearing of its decision not to institute inter partes review of claims 1-6 and 12 of U.S. Patent No. 6,432,586.

SAP America, Inc. v. Arunachalam, IPR2013-00194, Paper 69 (November 21, 2014), the Board denied rehearing of the Board’s Final Written Decision that claims 1–8 and 10–12 of U.S. Patent 8,104,492 are unpatentable.

SAP America, Inc. v. Arunachalam, IPR2013-00195, Paper 62 (November 21, 2014), the Board denied rehearing of the Board’s Final Written Decision that claims 1–6, 10–12, 14–17 and 35 of U.S. Patent 5,987,500 are unpatentable.

Ford Motor Company v. Paice LLC, IPR2014-00570, Paper 18 (November 26, 2014), the Board denied patent owner’s request for rehearing of its decision to institute inter partes review.

Ebay Inc. v. Moneycat Ltd., CBM2014-00091, CBM2014-00092, CBM2014-00093 (December 1, 2014), the Board denied the patent owner’s request for rehearing of the decision instituted covered business method review.

International Business Machines Corp. v. Intellectual Ventures II, LLC, IPR2014-00681, Paper 18, IPR2014-00682, Paper 18 (December 11, 2014), the Board granted rehearing but declined to change its decision on petitioner’s request to reconsider not instituting inter partes review as to certain claims.

 

 

 

 

Board Declines to Limit Cross Examination

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In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 27 (November 28, 2014), the Board declined to limit the scope of the patent owner’s cross-examination of petitioner’s witness.  Petitioner sought to limit cross examination only to the grounds instituted by the Board.  The Board noted that the scope of cross examination is normally limited to the scope of the direct examination. 37 C.F.R. § 42.53(d)(5)(ii). While the Board agreed that the most pertinent portions of the direct testimony may be related to the instituted ground, it was not persuaded that the remaining portions would not be relevant. The testimony could be relevant to the state of the prior art or the credibility of the declarant, and therefore the Board declined to further limit the scope of cross-examination.

Supplemental Evidence

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In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 (November 28, 2014), the Board denied petitioner’s motion to file as supplemental information under 37 C.F.R. § 42.123(a) declarations used in two subsequently filed inter partes reviews by third parties.

The Board found that petitioner met the criteria set forth in §42.123(a), noting that petitioner filed its request for authorization to file a Motion to Submit Supplemental Evidence within one month of the date of institution, and the patent owner did not dispute that the declarations are relevant to a claim for which the trial has been instituted.  However, the Board said that meeting §42.123(a) does not mean that the Board will automatically grant that motion, and allow submission of the supplemental information at issue, citing Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, (August 5, 2013); ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00139, (July 30, 2013); Norman Int’l, Inc. v. Andrew J. Tosti Testamentary Trust, Case IPR2014-00283, slip op. at 5 (PTAB Sept. 29, 2014).

The Board has allowed submission of supplemental information where the information was alleged to confirm the public accessibility of originally cited prior art, but did not change the grounds of unpatentability authorized in the proceeding, and did not change the evidence initially presented in the petition to support those grounds. Palo Alto v. Juniper, IPR2013-00369, (February 5, 2014).  However, the Board has denied motions to supplement where the petitioner sought to use the supplemental information to bolster the challenges presented in the petition.  ZTE v. Contentguard Holdings, IPR2013-00139, (July 30, 2013)(denying entry of supplemental information where petitioner submitted information in response to claim construction by Board in institution decision); Redline Detection v. Star Envirotech, IPR2013-00106, (August 5, 2013) (“We do not read 37 C.F.R. § 42.123 as permitting a petitioner to wait for the Board to narrow the grounds submitted in the petition in order to create a more focused declaration at less expense that will bolster its position in the chosen grounds.”).

Denying entry of supplemental information which effectively changes the evidence originally relied upon in a petition is in accord with the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim.   The Board found that admitting the declarations would change the evidence relied upon in the petition, and therefore denied the motion to submit supplemental information.

 

 

Motion to Strike vs. Motion to Exclude

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In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00304, Paper 23, IPR2014-00305, Paper 24 (November 28, 2014), the Board denied petitioner leave to file a motion to strike exhibits from the patent owners response because the exhibits contained attorney argument, and thus were an attempt to avoid the page limit.  Because all of the information in the Exhibit appeared elsewhere in patentees papers, and petitioner timely served objections in accordance with 37 C.F.R. § 42.64(a)(1), preserving petitioner’s ability to file a motion to exclude, the Board saw no reason to allow a motion to strike the exhibit.

 

November 28, 2014

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Institution Decisions

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00789, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 6,738,155..

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00790, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–3 (all the challenged claims) of U.S. Patent No. 6,611,349.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00791, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 10–14 of U.S. Patent No. 6,611,349 (but not challenged claims 4-9).

In Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00958, Paper 11 (November 28, 2014), the Board denied inter partes review of claims 1–17 of U.S. Patent No. 5,602,831.