New Filings

Sony Online Entertainment LLC filed IPR2014-01232 challenging U.S. Patent No. 6,306,035, assigned to Agincourt Gaming LLC.

Sony Online Entertainment LLC filed IPR2014-01255 challenging U.S. Patent No. 8,454,432, assigned to Agincourt Gaming LLC.

Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,311,037.

Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,770,512, assigned to Courtesy Products, Inc.

Initiative for Responsibility in Drug Pricing LLC filedIPR2014-01259 challenging U.S. Patent No. 7,879,828, assigned to Wyeth LLC.

Hamilton Beach Brands, Inc. filed UPR2014-01260 challenging U.S. Patent No. 7,258,884.

Institution Decisions

In ButamaxTM Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00402, Paper 11 (August 8, 2014), the Board instituted inter partes review of claims 1-15 of U.S. Patent No. 8,373,012.

In Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00418, Paper 7 (August 8, 2014), the Board instituted inter partes review of claims 1–11 and 17–19 (all of the challenged claims) of U.S. Patent No. 5,500,819. 

Dispositions

In Branch Banking and Trust Company v. EMG Technology, LLC, CBM2014-00094, Paper 9, CBM2014-00145, Paper 8, (August 8, 2014) the Board terminated the proceeding before initiaton of a covered business method review of U.S. Patent No. 7,441,196 on the joint motion of the parties.

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00415, Pape 51, IPR2013-00416, Paper 35, IPR2013-00417, Paper 62 (August 7, 2014), the patent owner submitted a notice of withdrawal of motion to amend “without prejudice” to pursue the same claims in another application or proceeding.  The Board explained that the paper was more than merely a notice of withdrawal of its Motion to Amend, because it specified the desired effect or consequence of the withdrawal. The Board treated the Notice as a motion, which pursuant to 37 C.F.R. § 42.20(b), cannot be filed without prior authorization from the Board, and ordered it expunged.

In Iron Dome LLC v. Chinook Licensing DE, LLC., IPR2014-00674, Paper 7 (August 7, 2014), the Board treated the patent owners request for an award of its attorney’s fees associated with the proceeding, as “sanctions pursuant to 37 C.F.R. § 42.12″ as an unauthorized motion, and required the patent owner to file a new response.

These are timely reminders that the Board should be consulted before any filing (even one attempting with withdraw a prior filing).

New Filings

Zerto, Inc. filed IPR2014-01254 challenging U.S. Patent No. 7,603,395 assigned to EMC Corporation.

Institution Decisions

In Brookwood Companies Incorporated v. Nextec Applications, Inc., IPR2014-00412, Paper 13 (August 7, 2014), the Board instituted inter partes review of claims 1–6, 8–13, and 21–23 (all of the challenged claims) of U.S. Patent No. 5,004,643.

In U.S. Bancorp v. Solutran, Inc., CBM2014-00076, Paper 16 (August 7, 2014), the Board instituted covered business method patent review of claims 1–6 (all of the challenged claims) of U.S. Patent No. 8,311,945.

Dispositions

In Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00149, paper 20 (August 7, 2014), the patent owner moved to cancel claims 1-14 (all of the challenged claims) of U.S. Patent No. 8,321,580, so the Board terminated the inter partes review.

In Silver Peak Systems, Inc. v. Riverbed Technology, Inc., IPR2014-00128, Paper 20 (August 7, 2014),  the patent owner moved to cancel claims 1, 2, 5–9, and 11 (all of the challenged claims) of U.S. Patent No. 8,271,688, so the Board terminated the inter partes review.

In Mobotix Corp. v. E-Watch Corporation, IPR2013-00255, Paper 23, (August 7, 2014), the Board issued a final written decision finding claims 1–25 and 32–34 (all of the challenged claims) of U.S. Patent No. 6,970,183 unpatentable.

Decision on Rehearing

In Panel Claw, Inc. v. SunPower Corporation, IPR2014-00388, Paper 14 (August 7, 2014) the Board denied rehearing of its decision not to institute inter partes review of some (claims 17, 18, 36, 38–40, 58, 59, 61–63, 65, 66, 71–73, and 76) of the challenged claims of RE38,988.

Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, IPR2014-01184, Paper 3, IPR2014-01182, Paper 3, IPR2014-01181, Paper 3, August 5, 2014), the Board granted the Petition a filing date, but gave the petitioner five business days to correct the claim charts. The Board cautioned:

Claim charts should only be used to provide an element-by-element showing as to how the prior art teaches the limitations of a claim (e.g., citations to a prior art reference, quotations from a prior art reference). Claim charts may not include 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. A mere citation to an expert declaration (e.g., “See Ex. 1015 ¶ 29”) in a claim chart is permissible, but anything more than a mere citation is improper.

Footnotes are part of the claim charts and arguments should not be included.

In MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00272, Paper 30 (August 5, 2014), one of the parties mistakenly filed, rather than emailed, their exhibits for the Oral Hearing.  The Board expunged the improperly filed exhibits, and reminded parties that these exhibits should be emailed to the Board, but not filed,

Dispositions

In Heartland Tanning, Inc. v. MT Manufacturing, Inc., IPR2014-00018, Paper 30 (August 5, 2014), the Board granted the parties joint motion to terminate the proceedings based on settlement.

New Filings

Ericcson Inc. filed IPR2014-01149 challenging U.S. Patent No. 6,023,783, assigned to Intellectual Ventures I LLC.

Johnson Health Tech Co., Ltd, filed IPR2014-01242 challenging U.S. Patent No. 6,193,631 asigned to Wilmington Trust FSB.

Geox S.p.A. filed IPR2014-01244 challenging U.S. Patent No. 6,855,171 assigned to Columbia Sportswear Company.

Wintek Corporation filed IPR2014-01245 challenging U.S. Patent No. 8,283,935 assigned to TPK TOUCH SOLUTIONS INC.

Mercedes-Benz USA, LLC filed IPR2014-01247 challenging U.S. Patent No. 5,954,781 assigned to Velocity Patents LLC.

Tietex International, Ltd. filed IPR2014-01248 challenging U.S. Patent No. 8,501,639.

HTC Corporation filed IPR2014-01249 challenging U.S. Patent No. 6,362,850, assigned to Flashpoint Technology, Inc.

Institution Decisions

In Schrader International, Inc. v. Wasica Gmbh, IPR2014-00476, Paper 7 (August 2014), instituted inter partes review of claims 1-6, 9-10, 12-19, and 21 (but not claim 11) of U.S. Patent No. 5,602,524.

Dispositions

In Impax Laboratories, Inc. v. Meda Pharmaceuticals Inc., IPR2014-00731, Paper 12 (August 4, 2014), the Board granted the parties’ joint motion to terminate,

New FIlings

Vonage Holdings Corporation filed IPR2014-01223 challenging U.S. Patent No 6,513,066, assigned to Straight Path IP Group, Inc.

NetApp filed IPR2014-01233 challenging U.S. Patent No. 7,987,311, assigned to Crossroads Systems, Inc.

In Greene’s Energy Group, LLC v. Oil States Energy Services, L.L.C., IPR2014-0261, Paper 18 (August 15, 2014), the Board’s advice to a patent own on preparing a motion to amend is a reminder to the rest of us, that amending claims in a IPR is virtuall impossible.  The amendment must “respond to a ground of unpatentability involved in the trial” and it cannot ” enlarge the scope of the claims of the patent or introduce new subject matter.”  Furthermore amendment is not authorized unless the movant shows that theclaims are patentable.  In the 15 pages allowed, the patent owner must:

identify specifically the feature(s) or limitation(s) added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s) or limitation(s), including the construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record, but known to Patent Owner.

A mere conclusory statement by counsel in the motion to amend that one or more added features or limitations are not described in any prior art or would not have been suggested or rendered obvious by the prior art is facially inadequate. It also is insufficient for the movant simply to explain why the proposed substitute claims are patentable in consideration of the challenges on which the Board instituted review. Limiting the discussion either to the references already in the proceeding, or to the narrow combination specifically recited in the claim, does not provide a meaningful analysis.

In these 15 pages the patent owner also must clearly identify the written description support for the proposed substitute claims. Merely indicating where each claim limitation individually is described in the original disclosure may be insufficient to demonstrate support for the claimed subject matter as a whole.

There is nothing new here — amendment during inter partes review remains out of reach for most patent owners.

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In HTC Corporation v. Cellular Communicatiosn Equipment LLC, IPR2014-01135, Paper 3 (July 29, 2014); an dNEC Corporation of America v. Nokia Siemens Networks Vermoegensverwaltung GmbH & Co. KG, IPR2014-01132, Paper 4 (July 29, 2014); the Board  granted the Petitions a filing date, but objected to petitioner’s single column claim chart format, and gave the respective petitioner five business days to file a corrected Petition with the more conventional two column claim charts.  In NEC Corporation of America v. Nokia Siemens Networks OY, IPR2014-01131, Paper 4 (July 29, 2014), the Board granted the Petitions a filing date, but objected to petitioner’s landscape orientation for claim charts, and gave the petitioner five business days to file a corrected Petition with the more conventional portrait orientation.