In NHK Seating of America, Inc. v. Lear Corporation, IPR2014-00115,Paper 27, (July 1, 2014), the patent owner objected to petitioner’s translation of one of the exhbiits, so the petitioner sought to file a new transaltion.  The Board granted the motion, and the Patent Owner wanted to depose the translator, arguing that the translation was accompanied by a declaration of the translator; and thus, the deposition of the translator was covered by the rule allowing cross-examination of affidavit testimony. 37 C.F.R. 42.51(1)(ii).  The Board agreed with the patent owner, but encouraged the parties to confer before the deposition

Institution Decisions

In Panel Claw, Inc. v. SunPower Corporation, IPR2014-00388, Paper 10, June 30, 2014), the Board instited inter partes review of claims 1, 55, 56, 78, and 79, but not with respect to claims 17, 18, 36, 38–40, 58, 59, 61– 63, 65, 66, 71–73, and 76 of U.S. Patent No. RE38,988.

In MediaTek Incorporated v. Netvinci, Inc., IPR2014-00328, Paper 24 (June 30, 2014), the Board denied inter partes review of claims 1-16 (the “challenged claims”) of U.S. Patent No. 6,601,126.

FInal Written Decision

In Redline Detection, LLC v. Star EnviroTech, Inc., IPR2013-00106, Paper 66 (June 30, 2014), the Board  found that claims 9 and 10 of Patent No. US 6,526,808 (all of the challenged claims) were not unpatentable.

New Petitions Filed

Intellectual Ventures II LLC filed IPR2014-01031 challenging U.S. Patent No. 7,848,353,

New Petitions

SanDisk Corporation filed IPR2014-01029 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.

Taiwan Semiconductor Manufacturing Company, Ltd. filed IPR2014-01030 challenging U.S. Patent No 5,652,084 assigned to Fortress Credit Co., LLC

Hyundai Mobis Co., Ltd. filed IPR2014-01005 challenging U.S. Patent No. 7,347,450 assigned to Autoliv ASP, Inc.

Hyundai Mobis Co., Ltd. filed IPR2014-01006 challenging U.S. Patent No. 7,614,653 assigned to Autoliv ASP, Inc.

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent appliaction by petitioner, arguing that petitioner made arguments about the prior art that were inconsistent with its interpretation of the prior art in the Petition.  Petitioner objected that the information had previously been produced in a lawsuit between the parties, and that it was unduly burdensome to produce it again.  The Board sidestepped the question finding that there was no proof that there were inconsistent statements, and thus the discovery was not mandatory discovery.  The Board instructed the Patent Owner to investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation, to the extent permitted. If, after doing so, Patent Owner is unable to obtain the necessary information, Patent Owner is authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).

Institution Decisions

Johnson Controls, Inc. v Wildcat Licensing WI, LLC, IPR2014-00305 (June 23, 2014), the Board instituted an inter partes review of claims 22-28 of U.S. Patent No. 7,062,831.

In Ariosa Diagnostics, Inc. v. The Board of Trustees of the Leland Stanford Junior University,  IPR2013-00308, Paper 27 (June 6, 2014) another patent owner was complaining that the Petitioner  had exceeded the proper scope in its reply.  The Board “noted that we understood Patent Owner’s frustration and concern” but reiterated that it will sort out the proper from the improper when making the final written decision.”  In response to the argument that the Board cannot “unread” the improper material, the Board reminde the patent owner that the Board is comprised of “persons of competent legal knowledge and scientific ability,” fully capable of disregarding the portions of the record it is excluding.

GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041) Paper 38,  (IPR2014-00043), Paper 37, (IPR2014-00051), Paper 36. (IPR2014-00054), Paper 35, (IPR2014-00055), Paper 29  (June 3, 2014), the Board denied patent owners requet for discovery about the real party in interest in viiew of the Petitioner’s agreement to provide the requiested information.

New Filings

Excelsior Medical Corporation filed IPR2014-00880 challenging U.S. Patent No. 8,740,864.

Institution Decisions

PNC Bank, N.A. v. Maxim Integrated Products, Inc., CBM2014-00038, Paper 19, CBM2014-00039, Paper 19, CBM2014-00040, Paper 19,  CBM2014-00041, Paper 19 (June 3, 2014) , the PTAB declined to instaitute a covered business method review because one of the petitioners had challenged the validity of the patent before the filing of the petition, and this could not be resolved by that party agreeing to take an adverse judgment.

Amneal Pharmaceuticals, LLC v . Endo Pharmaceuticals Inc.,  IPR2014-00160 (June 3, 2014), the Board instittued trial as to claim 4 of U.S. Patent No. 7,851,482 B2.