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.

One Page, Double-Spaced Fourteen Point Type

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In Valeo, Inc. v. Magna Electronics Inc., IPR2014-01208, Paper 11 (November 26, 2014), the Board gave the patent owner an entire page to respond to petitioner’s brief on the issue of real party interest.  The patent owner wanted to identify previous Board rulings pertinent to the issue and include relevant filings by petitioner — hopefully one page (excluding heading and signature block — will be enough to get this done.

Considering that patent owner had to set up and participate in a conference call, one wonders whether the burden to get this one page was worth it.

 

Correcting the Petition

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Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00809, paper 28 (November 26, 2014), the  Board allowed the Petitioner to file a corrected Petition and Exhibit under 37 C.F.R. § 42.104(c), and based upon the corrected Petition and exhibit, added a claim to the inter partes review.  The Board instituted inter partes review for less than all of the challenged claims, and the petitioner sought hearing after discovering a clerical error in the petition and the exhibit.  However the Board pointed out that rehearing was not the appropriate remedy, rather petitioner should have sought to correct the petition (rehearing of the uncorrected erroneous petition would reach the same result).

Petitioner filed a motion to amend the petition and exhibit, and despite patent owners objections, the Board agreed that it was a clerical error that caused the petition and expert declaration to cite to the wrong portions of the prior art.  The Board allowed the amendment, and altered its institution decision to include an additional claim.

 

Not So Fast

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MotionPoint Corporation v. TransPerfect Global, Inc., CBM2014-00060, Paper 27 (November 26, 2014) the Board denied petitioner’s motion to expedite the proceedings, finding that further acceleration would prejudice the patent owner.

November 26, 2014

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Institution Decisions

In CAO Group, Inc. v. The Procter & Gamble Company, IPR2-14-00796, Paper 18 (November 6, 2014), the Board denied inter partes review of  claims 1 to 13 of U.S. Patent No. 5,989,569.

In Global Tel*Link Corporation v. Securus Technologies, Inc., IPR2014-00810, Paper 8 (November 26, 2014) the Board instituted inter partes review of claims 1–8 of U.S. Patent No. 7,324,637.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2-14-00788, Paper 9 (November 26, 2014) the Board instituted inter partes review of  claims 10–20 (all of the challenged claims) of U.S. Patent No. 6,738,155.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00834, Paper 9 (November 26, 2014), the Board instituted inter partes review of 1–5 and 8 of U.S. Patent No. 8,482,274.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00836, Paper 9 (November 26, 2014), the Board instituted inter partes review of claims 1–5 and 8 of U.S. Patent No. 8,536,856.

In Nautique Boat Company, Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 (November 26, 2014), the Board instituted inter partes review of claims 1–5, 8–11, 13–16, and 18–20 of U.S. Patent 8,539,897 (but not challenged claims 6-7, 12, and 17).

Dispositions

In Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC., IPR2014-01438, Paper 11 (November 26, 2014), the Board terminated the inter partes review on the joint motion of the parties.

 

November 25, 2015

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Institution Decisions

In Excelsior Medical Corporation v. Becton, Dickinson and Company, IPR2014-00880, Paper 12 (November 25, 2014), the Board instituted inter partes review of claims 10, 12, and 14 of US Patent No. 8,740,864 (but not as to challenged claims 11 and 13.

Disposition

In Sequenom, Inc, v, The Board of Trustees of The Leland Stanford Junior University, IPR2-12-00390, Paper 45 (November 25, 2014), the Board issued a Final Written Decision that claims 1–17 of U.S. Patent No. 8,195,415 were not unpatentable.

 

Too Little, Too Late for Settlement

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In salesforce.com, Inc. v. VirtualAgility Inc., CBM2013-00024 (November 24, 2014), the Board denied patent owner’s request for authorization to file a Motion to Vacate the Final Written Decision and to Terminate the Proceeding after the Final Written decision has been Vacated.  The Board noted that under 35 U.S.C. § 327(a), it may continue to completion of trial to render judgment even if the parties have settled and the proceeding is terminated with respect to each petitioner, and reasoned that if it can proceed to issuance of a Final Written Decision despite settlement, then an already issued Final Written Decision should not be vacated based on settlement between the parties.

November 24, 2014

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New Filings

Pfizer, Inc. filed IPR2015-00293 challenging U.S. Patent No. 8,173,127, assigned to Intellect/Neurosciences, Inc.

World Bottling Cap, LLC filed IPR2015-00296 challenging U.S. Patent No. 8,550,271, assigned to Deutsche Bank AG.

Institution Decisions

In Yamaha Corporation of America v. Black Hills Media, LLC, IPR2014-00766, Paper  7 (November 24, 2014), the Board instituted inter partes review of claims 4, 5, 33, and 34 of U.S. Patent No. 8,214,873 (all of the challenged claims).

In Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746, Paper 22 (November 24, 2014), the Board instituted inter partes review of claim 14 of U.S. Patent No. 5,563,883 (but not challenged claims 1, 3, and 4).

In CareCloud Corporation v. athenahealth, Inc., CBM2014-00143, Paper  7, (November 24, 2014), the Board instituted covered business method review of claims 1-20 of U.S. Patent No. 7,617,116.

Dispositions

In Accord Healthcare, Inc. v. Helsinn Healthcare S.A., IPR2014-00010, Paper 10 (November 24, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Callidus Software, Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 50, CBM2013-00053, Paper 46, CBM2013-00054, CBM2014-00117, CBM2014-00118 (November 24, 2014), the Board terminated the covered business method review on the joint motion of the parties, affecting U.S. Patent Nos. 7,904,326, 7,958,024, 7,908,304, 7,908,304, and 7,958,024.

November 21, 2014

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New Filings

Microboards Technology, LLC filed IPR2015-00284 challenging U.S. Patent No. 5,866,058 assigned to Stratasys Inc.

Artsana USA, Inc., filed IPR2015-00286 challenging U.S. Patent No. 8,764,612 assigned to Kolcraft Enterprises, Inc.

Microboards Technology, LLC filed IPR2015-00287 challenging U.S. Patent No. 6,004,124 assigned to Stratasys Inc.

Microboards Technology, LLC filed IPR2015-00288 challenging U.S. Patent No. 8,349,239 assigned to Stratasys Inc.

Institution Decisions

In Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00757, Paper 8, (November 21, 2014), the Board instituted inter partes review of claims 1–20 of U.S. Patent No. 8,300,285 (all of the challenged claims).

Dispositions

Corning Optical Communications RF v. PPC Broadband, Inc., IPR2014-00346 (November 21, 2014), the Board issued a Final Written Decision that claims 1–8, 10–16, and 18–31 of U.S. Patent No. 8,287,320 are unpatentable.

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00342, Paper 49 (November 21, 2014), the Board issued a Final Written Decision that claims 10–25 of U.S. Patent No. 8,323,060 are unpatentable.