In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 19, (July 9, 2014) the Board granted Enzymotec’s motion for joinder of IPR2014-00556 with IPR2014-00003. Absent joinder with the other proceeding, Enzymotec’s Petition for Inter partes review is barred under 35 U.S.C. § 315(b).

The Board did not believe that the possibility of broadening the scope of issues in IPR2014-00003 was an adequate reason for denying joinder, noting section 315(c) permits joinder of “any person who properly files a petition under section 311.” There is no language in either § 311 or § 315(c) requiring the Board to limit Enzymotec’s Petition to identical issues in IPR2014-00003.

New Petitions Filed

RPC Formatec GmbH filed IPR2014-01127 challenging U.S. Patent No. 8,662,075.

Institution Decisions

In SAP America Inc. v. Clouding IP, LLC, IPR2014-00299, Paper 8 (July 9, 2014) the Board instituted inter partes review of claims 1, 2, 25, 28, 32, (but not 50–57) of U.S. Patent No. 6,925,481.

In SAP America Inc. v. Clouding IP, LLC, IPR2014-00300, Paper 9 (July 9, 2014) the Board instituted inter partes review of claims 1–9 and 17 of U.S. Patent No. 7,254,621.

In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 18 (July 9, 2014), the Board instituted inter partes review of  claims 1 – 6, 9, 12, 13, 19 – 29, 32, 35, 36, and 42 – 46 of U.S. Patent No. 8,278,351.

Final Written Decisions

In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00407, Paper 14, IPR2014-00408, Paper 13 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.

In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00209, Paper 28, IPR2014-00212, Paper 30 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.

Institution Decisions

Stewart Title Guaranty Company v. Segin Software LLC,  CBM2014-00051 (July 8, 2014) instituted a covered business method review of claims 1–10 of U.S. Patent No. 8,165,939.

SDI Technologies, Inc. v. Bose Corporation, IPR2014-00343, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 52, 53, 55-61, and 75 of U.S. Patent No. 8,401,682.

SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 51-53, 55-62, 75, and 76 of  8,364,295.

PRISM Pharma Co., Ltd. v. JW Pharmaceutical Corp., IPR2014-00315, Paper 14, (July 8, 2014), the Board denied inter partes review of claims 1-3 and 5-7 of U.S. Patent No. 8,318,738.

Final Written Decisions

Smith & Nephew, Inc.v. The University of North Carolina at Chapel Hill, IPR2-14-00112 , Paper 21 (July 8, 2014), the Board terminated the proceeding in view of the Settment between the parties.

in Diablo Technologies, Inc. v. DBD Credit Funding LLC, IPR2014-00882, Paper 4 IPR2014-00883, Paper 3,  IPR2014-01011, Paper 4 (July 7, 2014), the Board granted the Petition a filing date, but identifed two defects that petitioner had to correct within five days: the certificate of servce was a separate paper and tables other than claim charges were single-spaced.

Integrated Global Concepts, Inc. v. J2 Global, Inc., IPR2014-01027, Paper 4 (July 7, 2014), the Board granted the petition a filing date, but required the petition to fix the claim charts, which 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.”  The Board also required the petitioner to double space its footnotes.

Institution Decision

Conopco, Inc. dba Unilever v. The Procter & Gamble Company,  IPR2014-00506, Paper 17, (July 7, 2014), the Board denied institution of inter partes reveiw of claims 6-10, 14, 15, and 21-23 of U.S. Patent No. 6,451,300.

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00507, Paper 17, (July 7, 2014), the Board denied institution of inter partes reveiw of claims 13, 14, 16, 20-22, 24, 25, 27, 31, and 33 of U.S. Patent No. 6,974,569.

Final Written Decision

LaRose Industries, LLC v. Choon’s Design LLC, IPR2014-00218, Paper 18 (July 7, 2014), on the patent owner’s motion for adverse judgment, the Board determined that claims 1, 5-8, 10, and 11 of U.S. Patent No. 8,485,565 were unpatentable.

In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309, Paper  07/03/2014 19, the Board denied reconsideration that admitted prior art in the patent under review constituted “prior art consisting fo patents or printed publications” under 35 U.S.C. 311(b).  The Board noted that it has long treated a patent applicant’s admissions as prior art.  The Board said that: “The ’640 patent is undeniably a “patent.” The fact that Saint-Gobain made admissions against its own interest in the public record within the four corners of its own patent is reliable evidence that the admitted prior art antedates the claimed invention.”

In International Business Machines Corporation v.Intellectual Ventures II LLC, IPR2014-00180, Paper 22, (July 3, 2014), the Board denied petitioner’s request to file a transcript of the inventor’s testimony as supplemental information.  The Board was unpersuaded by the argument that the inventor testimony is relevant to a claim for which trial has been instituted. The Board said that the general relevancy of an inventor’s testimony regarding the operation of the invention has little relevance to inter partse review proceedings. The possibility that it might be useful in understanding the invention is not significant enough to show that consideration of the information would be in the interests of justice to allow additional testimony on issues already developed by Petitioner on the record.  The Board observed that the request focused on its utility to the panel’s understanding of the technology or assistance in claim construction, a utility that seems generic in nature and untethered to any specific claim for which trial has been instituted.

In Ford Motor Co. v. Cruise Control Technologies LLC, IPR2014-0281, Paper 19, (July 2, 2014) the Board denied patent owner’s motion to join five proceedings U.S. Patent No. 6,324,463.  The Board ducked the question of whether proceedings could be joined before they were instituted, finding that in any event the patent owner failed to justify joinder.

As the moving party, the patent owner had the burden of proof to establish that it is entitled to joinder of the five subject proceedings. 37 C.F.R. § 42.20(c) (2013), and the Board was not persuaded that joinder would reduce, in any material manner, the burden placed upon Patent Owner in defending the validity of the ’463 patent before the Board. The Board noted that the Patent Owner will still have to defend against the same number of parties and prepare briefs addressing the same grounds.  The Board said that the patent owner “presents no credible evidence or argument in support of its statement that five separate proceedings “means five of everything at five times the cost” versus one joined proceeding which would involve the same substantive issues as the five separate proceedings. The alleged discovery burdens imposed by five separate proceedings can be alleviated substantially by entering the same schedule in each case, in conjunction with cooperation between the parties and motion practice in the event of disputes — which is no different than what would happen in one joined proceeding.

The Board agreed with Petitioner that Patent Owner invited a multi-front battle concerning the validity of the ’463 patent when it filed fifteen separate infringement lawsuits.

Finally the Board was not persuaded that  joinder in the present case, whether before or after institution of trials, materially would benefit the Board, noting that the same three-Judge panel has been assigned to each of the five subject proceedings.

Institution Decisions

The Board instituted an inter partes review in Toyota Motor North America v. Cruise Control Technologies LLC, IPR2014-00280, as to claims 1–3, 5, 12–19, 21–26, and 28–31 of claims 1–5, 12–16, 18, 19, 21, 25–28, and 34–36 of U.S. Patent No. 6,324,463.

The Board instituted an inter partes review in Ford Motor Company v. Cruise Control Technologies LLC, IPR2014-00281, as to claims 1–3, 5, 12–19, 21–26, and 28–31 (but not challenged claims 20, 27, and 34-36) of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in Subaru of America, Inc. v. Cruise Control Technologies LLC, IPR2014-00279, Paper 13, as to claims 1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in American Honda Motor Co., Inc. v. Cruise Control Technologies LLC, IPR2014-00289, Paper 19, as to claims  1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.

The Board instituted and inter partes review in Nissan North America, Inc. v. Cruise Control Technologies LLC, IPR2014-00291, Paper 19, as to claims 1-5, 12-15, 18-20, 25-28, and 34-36 of U.S. Patent No. 6,324,463.