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.

November 20, 2014

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New Filings

Zetec, Inc. filed IPR2015-00280 challenging U.S. Patent No. 6,823,269, assigned to Westinghouse Electric Co LLC.

Google Inc. filed IPR2015-00283 challenging U.S. Patent No. 6,038,295 assigned to TLI Communications LLC.

Institution Decisions

In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00768, Paper 11, (November 20, 2014), the Board instituted inter partes review of claims 9, 10, 13–15, and 27–42 of U.S. Patent No. 7,975,726 (but not as to challenged claims 1–8, 11, 12, and 16–26).

In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00770, Paper 13, (November 20, 2014), the Board instituted inter partes review of claims 1 and 5–37 of U.S. Patent No. 8,667,991, (but not as to challenged claims 2, 3, and 4).

In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00772, Paper 13, (November 20, 2014), the Board instituted inter partes review of claims 1–16 (all of the challenged claims) of U.S. Patent No. 8,667,992.

The Gillette Co., v. Zond, LLC, IPR2014-01020, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No. 6,805,779 (all of the challenge claims).

In The Gillette Co., v. Zond, LLC, IPR2014-01022, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779 (all of the challenge claims).

In The Gillette Co., v. Zond, LLC, IPR2014-01025, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 7, 9, 20, 21, 38, and 44 of U.S. Patent No. 6,805,779 (all of the challenge claims).

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.

In Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00952, Paper 8 (November 21, 2014) the Board denied inter partes review of claims 1–20 of U.S. Patent No. 8,300,285.

In Ford Motor Company v. Paice LLC, IPR2014-00852, Paper 11, the Board denied inter partes review of claims 1–3, 5, 6, 19, 27, 40, and 58 of U.S. Patent No. 7,455,134.

Dispositions

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00340, Paper 77 (November  21, 2014), the  Board issued a Final Written Decision that claims 1–9 of U.S. Patent No. 8,323,060 are unpatentable.

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00345, Paper 76 (November  21, 2014), the  Board issued a Final Written Decision that claims 7–27 of U.S. Patent No. 8,313,353 are unpatentable.

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00347, Paper 79 (November  21, 2014), the  Board issued a Final Written Decision that claims 9, 17, and 32 of U.S. Patent No. 8,287,320 are unpatentable.

In Dell, Inc. v. Selene Communication Technologies, LLC, IPR2014-01411, Paper 21 (November 21, 2014) the Board terminated the proceeding on the joint Motion of the Parties.

November 19, 2014

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Institution Decisions

In Advanced Micro Devices, Inc.. v. Zond, LLC, IPR 2014-01072, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No. 6,805,779 (all of the challenged claims).

In Toshiba Corporation v. Zond, LLC, IPR2014-01070, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779.

In Toshiba Corporation v. Zond, LLC, IPR2014-01074, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 7, 9, 20, 21, 38, and 44 of U.S. Patent No. 6,805,779.

In Gillette Company v. Zond, LLC, IPR2014-01019, Paper 13 (November 19, 2014), the Board instituted inter partes review of claims 5, 6, 8, 19, 22, 23, and 43 of U.S. Patent No. 6,805,779.

Dispositions

In Ricoh Americas Corp. v. MPHJ Technology Investments, LLC, IPR2013-00302, the Board issued a Final Written Decision that claims 1–5 and 7–11 of U.S. Patent No. 7,986,426 (but not challenged claim 6) were unpatentable.

In Hayward Industries, Inc. v. Pentair Ltd., IPR2013-00285, Paper 47 (November 19, 2014), the Board issued a Final Written Decision that claim 12 of U.S. Patent No. 8,019,479 (the only challenged claim) was unpatentable.

In Hayward Industries, Inc. v. Pentair Ltd., IPR2013-00287, Paper 43 (November 19, 2014), the Board issued a Final Written Decision that claim 1 of U.S. Patent No. 7,704,051 (the only challenged claim) was unpatentable.

In Hewlett-Packard Company v. MPHJ Technology Investments, LLC, IPR2013-00309, Paper 35 (November 19, 2014), the Board issued a Final Written Decision that claims 1–12, 14, and 15 of U.S. Patent No. 6,771,381 (but not challenged claim 13) were unpatentable.

In SAP America Inc. v. Clouding Corp., IPR2014-00299, Paper 24 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

In SAP America Inc. v. Clouding Corp., IPR2014-00300, Paper 21 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

In SAP America Inc. v. Clouding Corp., IPR2014-00308, Paper 20 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

 

Novemer 18, 2014

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Institution Decisions

In Fujitsu Semiconductor v. Zond, LLC, IPR2014-00918, Paper 13 (November 18, 2014), the Board instituted inter partes review of claims 5, 6, 8, 19, 22, 23, and 43 of U.S. Patent No. 6,805,779.

In Fujitsu Semiconductor v. Zond, LLC, IPR2014-00856, Paper 13 (November 18, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779.

Disposition

Focal Therapeutics, Inc. v. SenoRx, Inc., IPR2014-00116, Paper 32 (November 18, 2104), the Board terminated the inter partes review on the joint motion of the parties.

November 7, 2014

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New Filings

2Wire Inc. filed IPR2015-00239 challenging U.S. Patent No, 7,471,721 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00240 challenging U.S. Patent No, 8,090,008 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00241 challenging U.S. Patent No, 8,073,041 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00242 challenging U.S. Patent No, 8,218,610 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00243 challenging U.S. Patent No, 8,355,427 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00247 challenging U.S. Patent No, 7,292,627 assigned to TQ Delta, LLC.

Institution Decisions

In CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9 (November 7, 2014), the Board denied inter partes review of claims 1–43 (all of the claims) of U.S. Patent No. 7,577,970.

Dispositions

In SDI Technologies, Inc. v. Bose Corporation, IPR2013-00350, Paper 36 (November 7, 20140, the Board issued a Final Written Decision finding claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76 (all of the challenged claims) of U.S. Patent 8,401,682 unpatentable.

In SDI Technologies, Inc. v. Bose Corporation, IPR2013-00465, Paper 40 (November 7, 20140, the Board issued a Final Written Decision finding claims 1–21, 24, 27, 29–47, 50, 63, 64, 68– 70, 73, 74, 77, and 78 (all of the challenged claims) of U.S. Patent 8,364,295 unpatentable.

In Symantec Corporation v. RPOST COMMUNICATIONS LIMITED, IPR2014-00357, Paper 21 (November 7, 2014), the Board issued a final written decision, cancelling claims 9-20 of U.S. Patent 8,468,199 on the patentee’s motion.

In Game Show Network, LLC v. John Stephenson, IPR2013-00289, Paper 51 (November 7, 2014), the Board issued a Final Written Decision finding claims 1–19 of U.S. Patent No. 6,174,237 unpatentable.

 

Joinder Decisions

In The Gillette Company v. Zond LLC, IPR2014-00604, Paper 12 (November 7, 2014) the Board granted Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America motion to join IPR2014-01482 with IPR2014-00604.

November 6, 2014

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New Filings

Lord Corporation filed IPR2015-00246 challenging U.S. Patent No. 8,373,559.

Institution Decisions

In Compass Bank v. Intellectual Ventures II, IPR2014-00724, Paper 12 (November 6, 2014), the Board instituted inter partes review of claims 18–31 (the “challenged claims”) of U.S. Patent No. 5,745,574.

Rehearing Decisions

In Sony Corporation v. YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00218, Paper 55 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00219, Paper 62 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00327, Paper 17 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00326, Paper 19 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Dorman Products, Inc., v, Paccar Inc., IPR2014-00542, Paper 12, (November 6, 2014), the Board denied rehearing of its decision not to institute IPR of US Patent No. D525,731.

 

 

Additional Discovery Denied for Failure to Meet Garmin Factors

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Seoul Semiconductor Co., Ltd v. Enplas Corporation, IPR2014-00605, Paper 17, (November 5, 2014), the Board  denied patent owners motion for additional discovery which exceeded the scope of the Board’s authorization.  The Board further warned the parties that  future violation of our prohibition against unauthorized motions shall be subject to sanctions.

As to the discovery that the Board did authorize, the Board found patent owner’s application of the Garmin Factors deficient.  The Board found that the Patent Owner failed to meet the first factor by filing tow show beyond speculation that something useful will be discovered.  The Board further found that patent owner was asking for information that it could reasonable figure or assemble on its own in violation of the third factor.  Lastly the Board found that the requests were not sensibly and responsibly tailored to a genuine need as required by the fifth Garmin factor.

 

Board Rejects Attempt to Supplement Petition

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In PNC Bank, N.A. v. SECURE AXCESS, LLC, CBM2014-00100, Paper 18 (November 5, 3014), the Board denied petitioner authorization to file a motion to submit supplemental information to enter five to six new references in the record of the proceeding.  The petitioner acknowledged that each of the new references was available publically prior to the filing of the Petition, and that Petitioner could have discovered the references had it used the alternate search strategy. The Board was not persuaded that Petitioner could an sufficiently establish “why the supplemental information could not have been obtained earlier.” 37 C.F.R. § 42.223(b).

 

November 5, 2014

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New Filings

Unified Patents Inc. filed IPR2015-000232 challenging U.S. Patent No. 7,702,781, assigned to Teoco Corporation.

Institution Decisions
In BioDelivery Sciences International, Inc. v. MonoSol Rx, LLC, IPR2014-00794, Paper 7 (November 5, 2014), the Board denied inter partes review of claims 1–29 of U.S. Patent No. 8,652,378.

Dispositions

In Dyaco International Inc.v. Johnson Health Tech. Co., Ltd., IPR2013-00754, Paper 8 (November 5, 2014), the Board terminated the inter partes review on the joint motion of the parties, before trial was instituted.

In CustomPlay, LLC v. Clearplay, Inc., IPR2013-00484, Paper 29 (November 6, 2014), the Board issued a Final Written Decision that claims 16, 27, 28, 30–34, and 40 of U.S. Patent No. 7,577,970 we not show to be invalid.

 

 

 

 

 

 

Amendment of a Petition Denied, Although it May Be Possible

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In National Environmental Products Ltd. v. Dri-Steem Corporation, IPR2014-01503, Paper 11 (November 4, 2014), the Board denied the petitioner’s request to file an amended petition. The Board noted that it’s procedures for amendment of a Petition typically are limited to correction of a clerical or typographical mistake. 37 C.F.R. § 42.104(c). Nevertheless, the Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by the applicable rules. However, the Board was not persuaded, Petitioner should be authorized to submit the proposed supplemental information in a revised Petition.

The Board said that the original petition should have included all of the asserted grounds of unpatentability. 37 C.F.R. § 42.104(b). The Board said that the law requires that a petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Board found that the Petitioner did not explain sufficiently during the call why the information was not include in its petition.