Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 11  (June 3, 2014) (denying rehearding on refusal to institute trial)

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 25 (June 3, 2014) (denying rehearing on refusal to institute trial on certain grounds).

Alcon Research, Ltd. v. Joseph Neev,  IPR2014-00217, Paper 23 (June 2, 2014) (denying rehearing on refusal to institute trial on certain grounds).

GoerTek Electronics, Inc. v. Knowles Electronics, LLC., IPR2013-00523, Paper 26 (May 30, 2014)(denying rehearing on refusal to institute trial on alternative grounds).

In Hewlett-Packard Company v. MCM Portfolio LLC,  IPR2013-00217, Paper 29 (June 3, 2014) the Board discussed Demonstrative Exhibits:

Demonstrative exhibits are merely visual aids to a party’s oral presentation at the final oral hearing, and are not evidence. They may not include new argument or evidence. See CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 at 3-4 (Oct. 23, 2013).

Petitioner objected to Patent Owner’s slides 7-11 address Petitioner’s arguments that were not addressed in the patent owner’s response and that Patent Owner will use those slides as a basis to present new arguments at the oral hearing.  Petitioner confirmed that each of Patent Owner’s slides at issue does not contain new argument or evidence, but rather merely quotations from the petition. As such, the Board informed the parties that Patent Owner may use its demonstrative exhibits at the oral hearing.

The Board advised the parties to utilize their oral hearing time efficiently by only presenting arguments relied upon in the substantive papers previously submitted (e.g., the petition and patent owner response). Whatever a party desires to present should already have been presented in the party’s papers.The Board noted that the parties should act with courtesy and decorum at the oral hearing.  See 37 C.F.R. § 42.1(c).

Ericcson, Inc.v. Intellectual Ventures I LLC, IPR2014-00527 May 30, 2014), the Patent Owner charged that petitioner’s claim charts contained impermissible argument.  The Board disagreed, explaining that it was permissible to summarize the relevant disclosure of a reference:

We do not discern, however, that the claim charts include content that is prohibited. Although quotations from a prior art reference are permitted, and, in many cases, may be preferable, Board rules do not mandate such quotation to the exclusion of other qualified indications of how the prior art teaches the limitations of a claim. To that end, there is no prohibition on the use of a concise summary of the disclosure of a reference as an alternative to quotation from the reference in an element-by-element showing. That Ericsson’s claim charts include summary of the disclosure of the involved references beyond strict quotation does not, in our view, present improper content in the claim charts. We also do not discern that, in this case, the brief introductory or expository phrases that precede expression of the disclosure of a reference in connection with a claim element rise to the level of “argument” that must be excluded from a claim chart.

In Distinctive Developments, Ltd. Uniloc USA, Inc., IPR2013-00391, Paper 26,  (May 29, 2014), the Board denied patent owner a motion to strike the petitioner’s reply as exceeding its proper scope, explaining that the propriety of the reply would be considered by the Board.

Trials Instituted

Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc., IPR2014-00159, Paper 6 (May 28, 2014) the Board instituted inter partes review of claim 1, but not challenged claims 2-5 and 7-9, of U.S. Patent No. 7,343,165.

Trials Denied

Naughty Dog, Inc. v. McRo, Inc., IPR2014-00198, Paper 9, 05/28/2014 the Board denied inter partes review of claims 1-26 of U.S. Patent No. 6,307,576.

Dynamic Drinkware, LLC v. National Graphics, Inc., IPR2013-00131, Paper 32 (May 2, 2014), the Board expunged the petitioner’s papers that did not comply with Rule 42.6 (37 C.F.R. § 42.6), including by using a 12-point proportional font instead of the 14-point font required by the rule, using an even smaller font in the foot notes, and single spacing (rather than 1.5 line spacing) block quotes.  The Board did give the petitioner five days to submit corrected papers, however,

Instituton Decision

Ossur Americas, Inc. v. Otto Bock Healthcare LP, IPR2014-00145, Paper 15 (April 30, 2014), the Board instituted inter partes review of  claims 1-7, 10-13, and 16-23 of U.S. Patent No. 6,726,726.

Final Written Decision

Arthrex, Inc. v. Bonutti Skeletal innovations LLC, IPR2013-00631, Paper 22 (April 30, 2014), the patent owner disclaimed claims 64, 65, 67, 69, 70, 72–76, 80, 82, and 83 in U.S. Patent No. 5,921,986, and the Board terminated the inter partes review.

Linvatech Corporation v. Bonutti Skeletal Innovations LLC, IPR2013-00624, Paper 27 (April 30, 2014),  the Board terminated in the inter partes review on the joint motion of the parties.

Institution Decision

Twitter, Inc.v. Evolutionary Intelligence LLC, IPR2014-00092, Paper 12 (April 28, 2014), the Board denied institution of inter partes review of claims 1-16 of U.S. Patent No. 7,010,536.

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 27, and IPR2013-00277 (April 23, 2014), the Board again dealt with a patent owner’s motion to strike a petitioner’s reply that the patent owner believes exceeds the scope of petition.  The Board reminded patent owners that it determines whether a Reply and accompanying evidence are outside the scope of a proper Reply and evidence when the parties’ briefs are reviewed and the final written decision is prepared. If there are improper arguments and evidence presented with a Reply, the Board may strike portions or the entirety of the Reply and exclude related evidence. The Board said that it takes under consideration any alleged violations in due course, upon considering the record at the end of the trial.

The Board does not seem to understand that it is not fair to a patent owner not to know what issues are or are not in play at the Oral Hearing, which is why patent owners continue to try to file a motion to strike.

The Board points out that in addition to a motion to exclude, the patent owner can also cross-examine the petitioner’s witnesss, and file a motion for observation on cross-examination, but should a patent owner be put to these steps if the testimony is beyond the proper scope to begin with?

The issue arose a few days earlier in Microsoft Corporation v. Surfcast, Inc., IPR2013-00292 (April 21, 2014) where the patent owner sought permission to file a sur-reply to address what it beleived were improper evidence and arguments in petioner’s reply.  Again the Board said that it would exclude what should be excluded, but again this does not help the patent owner in the oral argument.

Denials

In Experian Marketing Solutions, Inc. v. RPOST Communications, Limited, CBM2014-00010, Paper 20 (April 22, 2014), the Board denied covered busienss method review of claims 1-11 of U.S. Patent No. 8,224,913 because the petitioner failed to demonstrate that the claimed subject matter is not a technical invention.

In Experian Marketing Solutions, Inc. v. RPOST Communications, Limited, CBM2014-00017, Paper 21 (April 22, 2014), the Board denied covered busienss method review of claims 1-16 of U.S. Patent No. 8,209,389 because the petitioner failed to demonstrate that the claimed subject matter is not a technical invention.