In GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041,Paper 23;  IPR2014-00043, Paper 25; IPR2014-00051, Paper 22; IPR2014-00054, Paper 19; IPR2014-00055, Paper 15 (April 22, 2014), the board denied patent owner’s request for additional discovery regarding the real party in interest, finding that the patent owner had not met the burden of proving what the requested discovery would prove.

However, in Unified Patents, Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 12 (April 22, 2014), the patent owner sougth to propound five interrogatories about the real party in interest.  The Board appeared include to allow the discovery in view fo the information the patent owner was able to muster, but wanted to see the five interrogatories first.

The Board flatly rejected the petitioner’s argument that the right to discovery was waived since the patent owner did not seek it prior to institution, noting that: “Not having asked for additional discovery prior to institution of trial does not waive Patent Owner’s opportunity to ask for additional discovery after institution of trial.”

In Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd., IPR 2013-00072, Paper 28 (April 28, 2014), the Board invalidated U.S. Patent No. D617,465. The Petition argued that the patent was not entitled to its priority date because of differences between the design patent drawings and the utility patent drawings from which it claimed priority, and thus an intervening reference anticipated or made obvious the claim:

The intervening prior art reference on the left is very similar to Fig. 1 of the patent. In response, the patent owner tried to revive its priority claim by amending the design patent claim (i.e., the drawings) to look more like the drawings in the utility patent priority application:

.  However, the Board determined that the amendment broadened the claim, and was thus inpermissable.  Unable to keep its priority claim, the intervening reference was very compelling, and the claim was cancelled.

Decisions Denying Inter Partes Review

in Loral Space & Communications, Inc., v. Viasat, Inc., IPR2014-00236, IPR2014-00239, IPR2014-00240, Paper 7, (April 21, 2014), the Board denied inter partes review in the cases, finding that they they were all filed too late (35 USC 315(b), 37 C.F.R. § 42.101(b)).  The Board rejected arguments that the bar does not apply to pre-enactment activities; that the bar does not apply because the complaints were amended within the one year bar period; and because the petitioner were filed within one year of the service of a complaint.

Institution Decisions
In Honeywell International, Inc. v. International Controls and Measurements Corporation, IPR2014-00219 (April 21, 2014), the Board instituted an inter partes reviewl of claims 1-6 (all of the challenged claims) of U.S. Patent No. 6,222,719.

Microsoft Corporation v. Surfcast, Inc., IPR2014-00271, Paper 18 (April 21, 2014) the Board denied petitioner’s motion to wtihdraw its motion for joinder of the proceeding with IPR2013-00292, apparently in addition to getting the Board’s permission to bring a motion, you likewise need permission to withdraw one!

IPR2014-00271 is like a chess game.  After having grounds in IRP2013-00292 denied as redundant, Microsoft requseted reconsideration, and presented the “redundant” grounds separately in IPR2014-00271, and asking that they be joined.  The Patent Owner opposed the motion.  The strategically, petitioner decided it wanted to withdraw the Motion for Joinder, and the patent owner is opposed the withdrawal.

In ACCO Brands Corporation v. Fellowes, Inc., IPR2013-00566, Paper 16 (April 18, 2014), Fellowes sought additional discovery related to secondary considerations.  The Board denied the discovery, explaining:

The legislative history of the AIA makes clear that additional discovery should be confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).

The Board also pointed out that the statutory standard for permitting additional discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5).  Finally, pointing out that there is a one-year statutory deadline for completion of inter partes review, the Board said that given the statutory deadlines imposed by Congress and with the limited nature of additional discovery in inter partes review proceedings, the Board will be conservative in authorizing additional discovery, citing154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (“Given the time deadlines imposed on these proceedings, it is anticipated that, regardless of the standards imposed in [sections 316 and 326], PTO will be conservative in its grants of discovery.”)

New FIlings

Endo Pharmaceutical Inc. filed IPR2014-00651 challenging U.S. Patent No. 6,723,340, assigned to DEPOMED, INC.

Endo Pharmaceutical Inc. filed IPR2014-00652 challenging U.S. Patent No. 6,723,340, assigned to DEPOMED, INC.

Hyundai Motor Company filed IPR2014-00657 challenging U.S. Patent No. 7,413,048, assigned to American Vehicular Sciences LLC.

Hyundai Motor Company filed IPR2014-00658 challenging U.S. Patent No. 7,976,060, assigned to American Vehicular Sciences LLC (Assignee)

Hyundai Motor Company filed IPR2014-00659 challenging U.S. Patent No. 8,235,416, assigned to American Vehicular Sciences LLC (Assignee)

In Texas Instruments Incorporated, v. Unifi Scientific Batteries, LLC, IPR2013-00213, Paper 27 (April 17, 2014), the Board said that:

A motion to strike is not, ordinarily, a proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules.

The Board explained that in the absence of special circumstance, the Board determines whether a reply and supporting evidence contain material exceeding the proper scope when it reviews all of the pertinent papers and prepare the final written decision. The Board may exclude all or portions of Petitioner’s reply and newly submitted evidence, or decline to consider any improper argument and related evidence, at that time.

This is consistent with the advice the Board gave a week earlier in in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), where the Board said that if an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.  At least this way the party can alert the Board to the issue.

In Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00333, Paper 38 (April 16, 2014), the Board gave an encore of the myriad of requirements to file a successful motion to amend, something no patentee has been able to accomplish.

In Toyota Motor Corporation v. LeRoy G. Hagenbuch, IPR 2013-00483, Paper 21 (April 16, 2014), the patent expired during the inter partes review, as a result the parties and the Board agreed that “broadest reasonable interpretation” was no longer appropriate.  (This mirrors the treatment in reexamination where because expiration of the patent means that the claims can no longer be amended, broadest reaasonable interpretation is no longer appropriate).  The Board which had instituted the Inter Partes Review based upon the broadest reasonable interpretation of the claim term monitoring: “monitoring” namely, “watching, keeping track of, or checking.”  The Board was now forced to construe the term “monitoring,” which it determined meant: “watching or keeping track of, or checking.”  At least in this case the interpreation and the broadest reasonable interpretation were exactly the same!

Athrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-00632, Paper 23 (April 16, 2014), petitioner moved to joint IPR2014-00632 with IPR2014-00633 to avoid any estoppel effect if a decision is renedered in one proceeding before the other. The patent owner opposed the motion, arguing that petitioner made a tactical decision to file two petitions, and cannot claim prejudice from the result of its decisions.  The Board denied joinder, finding the harm speculative because the proceedings are synchronized.  The Board further noted that although the cases involve the same patent and claims, the prior art is not identical, and the exhibits for each case are not consistently numbered, so joining the two cases would require renumbering and relabeling some of the exhibits. Finally, the Board noted that the parties can avoid duplication of work common to both cases by agreeing to, e.g., depose each expert witness one time for both cases.