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.

October 24, 2014

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New Filings

Agila Specialties Inc., filed IPR2015-00144, challenging U.S. Patent No. 8, 058,238 owned by the Royal Bank of Canada.

Institution Decisions

In McWane, Inc. v. Waugh, IPR2014-00777, Paper 8 (October 24, 2014) the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 8,567,155.

 

 

Institution Decision

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In The Gillette Company v. Zond LLC, IPR2014-00991, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25, 27–30, 33, 34, 38, 39, 42, 43, and 46–48 (all of the challenged claims) of U.S. Patent No. 7,811,421 B2 (“the ’421 patent”).

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 9, 14, 21, 26, 35, and 37 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00890, Paper 10 (October 24, 2014). the Board instituted inter partes review of claims 1, 2, and 4–17 of US Patent No. 7,265,792, but not claims 3, 26, and 27.

Termination

In RPC Formatec GmbH v. Trudell Medical International, IPR2014-01040, Paper 10 (October 24, 2014), the Board terminated the proceeding before institution on the joint motion of the parties.

Joinder

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00805.

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00800.

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00802.

Rehearing Decisions

In Samsung Electronics v Rembrandt Wireless Technologies, LP, IPR2014-00514, Paper 20, IPR2014-00515, Paper 20  (October 24, 2014) the Board denied rehearing of its decision not to institute inter partes review of U.S. Patent No. 8,023,580.

 

 

 

 

October 23, 2014

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Institution Decision

In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00647, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 10, 11, 15, 16, 17, 19, 20, and 23 of U.S. Patent No. 5,745,000.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 12 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In  IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00668, Paper 8 (October 23, 2014), the Board instituted inter partes review of claims 1–6, 11, 12, 14–17, and 21–27 of U.S. Patent No. 6,840,576, but not challenged claim 28.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 11 (October 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In DealerSocket, Inc. v. AutoAlert, LLC, CBM2014-00139, Paper 12 (October 23, 2014), the Board instituted a covered business method review of claims 1 and 3–7 of U.S. Patent No. 8,396,791.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In Eli Lilly and Company v. Los Angeles BioMedical Research Institute at Harbor-UCLA Medical Center, IPR2014-00693, Paper 14, (October 23, 2014), the Board instituted inter partes review of claims 1–5 of US 8,133,903.

Dispositions

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 1–18 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00277, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 19–30 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290, Paper 46 (October 23, 2014).

Joinder

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board joined the proceeding with IPR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00819.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 12 (October 2014), the Board joined the proceeding with IPR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board joined the proceeding with PR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00821.

Additional Discovery Relating to Real Party in Interest

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In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics where the Board allows discovery.  Similarly in General Electric Company v. TransData, Inc., IPR2014-01380, Paper 12 (October 20, 2010) the Board allowed the patent owner to move for additional discovery regarding the real party in interest.

October 20, 2014

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New Filings

Nestle Healthcare Nutrition, Inc., filed IPR2014-00094 challenging claims 1, 2, 16-18, 26, and 27 of U.S. Patent No. 6,209,591 owned by Stork Food & Dairy Systems B.V.

Institution Decisions

In The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. America’s Collectibles Network, Inc., CBM2014-00119, Paper 10 (October 20, 2014) the Board instituted a covered business method patent review of claims 1–39 (all of the challenged claims) of U.S. Patent 8,370,211.

In Conopco, Inc, v, The Procter & Gamble Co., IPR2014-00628, Paper 21 (October 21, 2014) the Board denied inter partes review of claims 1–23 (all of the challenged claims) of U.S. Patent No. 6,649,155.

 

If at First You Don’t Succeed, Don’t Try, Try Again

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In Conopco, Inc, v, The Procter & Gamble Co., IPR2014-00628, Paper 21 (October 21, 2014) the Board denied inter partes review of claims 1–23 (all of the challenged claims) of U.S. Patent No. 6,649,155.  The Board noted that it has discretion to decline to institute an inter partes review (35 U.S.C. § 314(a)), and that one factor it may take into account when exercising that discretion is whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. 325(d).  The Board compared the prior art and arguments raised in the instant petition to those raised in Conopco’s prior inter partes review petition, and determined that the petition raises “substantially the same . . . arguments” that “previously were presented to the Office” in the prior petition.  This was one of several circumstances that informed the Board’s decision to decline to institute review.

We double checked, and we were right!

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Several of the Board’s decisions in inter partes reviews are now on appeal.  The statute specifically allows the Patent Office to intervene, which is bit like allowing a district court judge to intervene in the appeal of a DJ or infringement case.  The Office has intervened in several of the appeals, and in each one, has come to the astonishing conclusion that the Board got it right:

WHATARETHEODSS

In re Cuozzo Speed Technologies, 2013-1301; Helferich Patent Licensing v. CBS Interacative, 2104-1556; Softwview LLC v. Kyocera Corporation.  Well then, if everything is sound, I guess the Federal Circuit work is done!

How the Office’s participation will facilitate appellate review or advance the administration of justice remains to be seen.

Petitioner Can’t Stop Patent Owner from Getting More Patents

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In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 18, (October 17, 2014), the Board denied petitioner authorization to file a motion to stay prosecution of Patent Owner’s continuation patent application.  The Board said that whether any of the claims in the patent will be canceled is an issue that is not yet decided and will not necessarily be decided until a final written decision is entered.  “To bar Patent Owner from prosecuting claims now that may be patentably indistinct from the claims under review thus would be premature.”  The Board said it was sufficient for Patent Owner to continue to take reasonable steps to apprise the Examiner of the status of this proceeding.

 

Spread Out! Double Space Everything

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In Microsoft Corporation v. Cellular Communications Equipment LLC, IPR2015-00011, Paper 3, (October 17, 2014), the Board gave Microsoft’s petition a filing date but required Microsoft to re-file the Petition because it contained singled spacing.  In a clear breach of double spacing etiquette, the identification of claims challenged on pages 3-4 and a footnote on page 50 were single spaced.  Don’t interfere with the orderly review of patents — double space everything!

October 17, 2014

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Institution Decisions

In First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, IPR2014-00715, Paper 9, IPR2014-00720, Paper 8 (October 17, 2014), the Board denied inter partes review as barred under 35 U.S.C. § 315(b), and for failure to name the real party in interest as required by 35 U.S.C. § 312(a).

In Ubisoft Entertainment SA v. Princeton Digital Image Corporation, IPR2014-00635, Paper 9 (October 17, 2014), the Board instituted inter partes review of claims 1–13, 15–18, and 21–23 of U.S. Patent No. 5,513,129 (but not as to challenged claims 14, 19, and 20).

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 1–11 and 33 (“the challenged claims”) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 12 and 13 (all of challenged claims) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00648, Paper 14 (October 17, 2014), the Board instituted inter partes review of 1, 2, and 5–8 (all of the challenged claims) of U.S. Patent No. 8,217,612.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00650, Paper 14 (October 17, 2014), the Board instituted inter partes review of claims 1, 6–9, 11, 15, and 16 of U.S. Patent No. 7,579,802.

 

 

Joinder Decisions

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 13 (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with Taiwan Semiconductor Manuf. Co. v. Zond, LLC., IPR2014-00807.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01100.

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01099.

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