New Filings

Nestle USA, Ind., filed IPR2015-00195 challenging U.S. Pat. 6,475,435 assigned to Stork Food & Dairy Systems, B.V.TORK FOOD & DAIRY SYSTEMS B.V.

LG Electronics, Inc. filed IPR2015-00196 challenging U.S. Patent 6,131,121 assigned to Straight Path IP Group, Inc.

Shinn Fu Company of America, Inc. filed IPR2015-000199 challenging U.S. Patent No. 6,604,610 assigned to the Tire Hanger Corporation.

New Filings

Apple, Inc., filed IPR2015-00185, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00186, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00187, challenging U.S. Patent No. 7,490,151, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00188, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00189, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.

Institution Decisions

In Google Inc. v. Personalweb Technologies, LLC, IPR2014-00977, Paper 11, IPR2014-00978, Paper 11, IPR2014-00979, Paper 10, IPR2014-00980, Paper 10 (October 30, 2014) the Board denied Google’s motion to join a previously instituted inter partes review because Google did not file its motion for joinder within one month after it instituted an inter partes review in the earlier proceeding, as required by 37 C.F.R. § 42.122(b).

In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00124, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.

In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00125, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.

Dispositions

In Netflix, Inc. v. Straight Path IP Group, Inc., IPR2014-01241 (October 30, 2014), the Board granted the parties joint motion to terminate.

In Vonage Holdings Corporation, et al., v. Straight Path IP Group, Inc., IPR2014-01223, IPR2014-01224, IPR2014-01225, IPR2014-01234, IPR2014-01241(October 30, 2014), the Board granted the parties’ joint motion to terminate.

In Novelty, Inc. v. Magna-Mug LLC, IPR2014-01171, Paper 17 (October 30, 2014), the Board granted the parties’ joint motion to terminate.

Decisions on Rehearing

In Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper 39, IPR2013-00590, Paper 40 (October 30, 2014) the Board denied rehearing  of its decision that Petitioner’s Reply evidence, would not be considered by the Board in rendering a final written decision.

In Safeway, Inc., v. Kroy IP Holdings, LLC, IPR2014-00685, Paper 13, the Board denied rehearing of its decision not to institute inter partes review of claims claims 1 and 19–25 of US Patent No. 7,054,830.

New Filings

Google Inc. filed IPR2015-00179 challenging U.S. Patent No. 8,572,279, assigned to Ex Machina, Inc.

Google Inc. filed IPR2015-00180 challenging U.S. Patent No. 8,601,154, assigned to Ex Machina, Inc.

Nest Labs, Inc. filed IPR2015-00181 challenging U.S. Patent No. 8,571,518, assigned to Allure Energy, Inc.

VSR Industries, Inc. filed UPR2015-00181 challenging U.S. Patent No. 6,860,814 assigned to Cole Kepro International LLC.

Institution Decisions

In Phigenix, Inc. v. ImmunoGen, Inc., IPR2014-00676, Paper 11 (October 29, 2014), the Board instituted inter partes review of claims 1-8 (all of the challenged claims) of U.S. Patent No. 8,337,856.

In C&D Zodiac, Inc. v. BE Intellectual Property, Inc., IPR2014-00727, Paper 15 (October 29, 2014), the Board instituted inter partes review of claims 1, 3–10, 12–14, 16–22, 24–31, and 33–38 (all the challenged claims) of U.S. Patent No. 8,590,838.

In DealerSocket, Inc. v.  AutoAlert, LLC, CBM2014-00132, Paper 11, The Board instituted covered business method review of claims 1, 3–5, 7, 9–11, and 15 of U.S. Patent No. 8,095,461

Decisions on Rehearing

In McClinton Energy Group L.L.C. v. Magnum Oil Tools International, Ltd., IPR2013-00231, Paper 33 (October 29, 2014) the Board denied patent owner’s request for a rehearing on the grounds that the Final Written Decision relied upon grounds not set forth in the Petition.

For all of its complexities, the inter partes review system can be fairly fault tolerant.  In Debasish Mukhopadhyay v. Veolia Water Solutions & Technology Support, IPR2014-01563, Paper 4 (October 28, 2014), the Board granted the petition a filing date, despite some glaring errors:

1. Failure to serve petition and all exhibits on the Patent Owner via Express Mail® or by means at least as fast and reliable as Express Mail®. Service may be made electronically upon agreement of the parties. 37 C.F.R. §§ 42.6(e), 42.105.
2. Incorrect spacing. 37 C.F.R. § 42.6 requires the petition to be double-spaced, with the exception of claim charts. Block quotations may be 1.5 spaced, but must be indented from both the left and right margins. The footnotes at pages 9–10 must be reformatted.
3. Failure to provide in a claim construction section a statement identifying how disputed or important claim terms are to be construed. See 37 C.F.R. § 42.104(b)(3).
4. Claim charts should be included in the petition. The rules require that the petition specify where each element of a challenged claim is to be found in the prior art. See 37 C.F.R. § 42.104(b)(4). This information is to be provided pursuant to the page limit and double-spacing requirements. The element-by-element showing may be provided in a claim chart, which counts towards the page limit, but may be single-spaced. See 37 C.F.R. § 42.6(a)(2)(iii). As it circumvents the double-spacing requirement, claim charts may not contain any arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. Submitting the claim chart as an exhibit appears to circumvent the page limit set forth in 37 C.F.R. § 42.24.

While Petitioner will be very busy in the next five business days making the necessary corrections, the Petition goes forward.

Institution Decisions

In Unverferth Manufacturing Co., Inc. v. J. & M. Manufacturing Co., Inc., IPR2014-00758, Paper 7 (October 28, 2014), the Board instituted inter partes review of claims 1–14 (all of the challenged claims)of Patent No. US 8,585,343.

In Parrot S.A. v. Drone Technologies, Inc., IPR2014-00732, Paper 8 (October 27, 2014), the Board instituted inter partes review of  claims 1–12 of U.S. Patent No. 8,106,748.

Dispositions

In Oracle Corporation v. Click-to-Call Technologies, Inc., IPR2013-00312, Paper 52 (October 29, 2014), the Board issued a Final Written Opinion that claims 1, 2, 8, 12, 13, 15, 16, 18, 19, 22–24, and 26–30 (all the claims in the proceeding) of U.S. Patent No. 5,818,836 were unpatentable.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00066, Paper 30 (October 28, 2014), the Board granted the parties’ joint motion to terminate.

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00266, Paper 73 (October 28, 2014), the Board disposed of the inter partes review by granting the patent owners motion to cancel claims 1, 2, 4, 11, 12, 17, 18, and 19 of U.S. Patent No. 8,158,346 (all of the challenged claims), but denying the patent owners motion to substitute new claims 20-26.