In Gnosis S.P.A., v. Merck & CIE, IPR2013-00117, Paper 64 (March 12, 2014), the Merck, the patent owner, tried to get the Board to allow it to give a rebuttal argument during the hearing, arguiing that it should be allowed to argue last, even if just briefly, because it bears the burden of proof as to evidence of secondary considerations of nonobviousness. While noting that the argument order may be reversed, such as when the only issue in the case is whether proposed substitute claims are patentable, the Board noted taht Petitioner still had the burden of proving invalidity, including the effect of seconday considerations, such that reordering the proceedings was not appropriate.

FInal Written Decisions

The Board issued a final written decision in Schrader-Brodgeport International, Inc. v. Continental Automotive Systems US, Inc., IPR2013-00014, Paper 32 (March 12, 2014), finding claims 1-5 and 7-11 of U.S. Patent No. 6,998,973 (all of the contested claims) invalid.

New IPR Filing

Intrado, Inc. filed IPR2014-00505 against U.S. Patent No. 6,775,356, assigned to 911 Notify, LLC.

New IPR Filing

Global Tel*Link Corporation filed IPR2014-00493 against U.S. Patent No. 7,899,167, assigned to SECURUS TECHNOLOGIES, INC. and T-NETIX, INC.

New Trials Instituted

The Board initiated an IPR trial in Broadcom Corporation v. Telefonaktiebolaget LM Ericsson, IPR2013-00636, Paper 25 (March 10, 2014), as to claim 1 of U.S. Patent No. 6,424,625 (the only challenged claim).  The Board also initiated an IPR Trial in Broadcom Corporation v. Telefonaktiebolaget LM Ericsson, IPR2013-00601, Paper 29 (March 10, 2014), as to claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54 of U.S. Patent No. 6,772,215 (all of the challengd claims).

The Board initiated an IPR Trial in GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00043, Paper 16 (March 10, 2014), as to claims 1-37 of U.S. Patent No. 6,475,435 (all of the challenged claims).  The Board initiated an IPR Trial in GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 15 (March 10, 2014), as to claims  1 and 4-20 of U.S. Patent No. 6,945,013 (but not as to claims 2 and 3, which were also challenged).

The Board initiated a CBMR Trial in Trulia, Inc. v. Zillow, Inc., CBM2013-00056, Paper 13 (March 10, 2014) of claims 2, 5, 15-25, and 40 of U.S. Patent No. 7,970,674 (all of the challenged).

w Trials Intiated

In SAP American v. Pi Net International, CBM2014-00018 Paper 16, (March 7, 2014) the Board denied joint of the proceedings, filed October 21, 2013, with CBM2013-00013, filed March 22, 2013, agreeing with the patent owner that the schedules of the two proceedings were incompatible.

In Amneal Pharmaceuticals LLC v, Supernus Pharmaceuticals, Inc., IPR2013-00372, Paper 33 (March 7, 2014), the Board rejected Supernus proposed protective order which sought to create a category of highly confidential documents that we not avaialable to any of Amneal’s employees, including in house counsel, who Supernus alleged were involved in business decision making.  Appeal to miss Supernus point entirely, the Board commented:

The risk of publication is no different for the “highly confidential” materials than for the other confidential information.  We discern, therefore, no meaningful purpose in ordering different access restrictions for them.

New Filings

Intel Corporation filed IPR2014-00470 and IPR2014-00473 against U.S. Patent No. 7,811,421assigned to Zond, Inc.

Apple Inc. filed IPR2014-00481and IPR2014-00482 against U.S. Patent No. 7,188,180 assigned to Virnetx, Inc.

Apple Inc. filed IPR2014-00483 and IPR2014-00484 against U.S. Patent No. 7,987,274 assigned to Virnetx, Inc.

Finjan, Inc. filed IPR2014-00492 against U.S. Patent No. 8,171,553 assigned to Fireeye, Inc.

Trials Instituted

The Board instituted a CBMR Trial in SAP America v Pi-Net International CMB2014-000018, Paper No. 14 (March 7, 2014).

The Board instituted IPR Trials in Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00554, Paper 13 (March 6, 2014), and in IPR2013-00557, Paper 12  (March 6, 2014).

The Board instituted an IPR Trial is CaptionCall, L.L.C v. Ultratech, Inc., IPR2013-00549, Paper 7 (March 5, 2014).

The Board instituted CBMR Trials in Callidus Software, Inc. v. Versata Development Group, Inc., CMB2013-00052, Paper No. 14 (March 4, 2014), and CMB2013-00053, Paper No. 14 (March 4, 2014).

The Board instituted an IPR Trial in Apple Inc. v. NetAirus Technologies LLC, IPR2014-00030, Paper 12 (March 4, 2014),

The Board instituted an IPR Trial in Athrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-00632 Paper 12, (March 3, 2014).

Trials Denied

The Board denied CBMR trials in MasterCard International Incorporated v. John D’Agostino, CBM2013-00057, Paper 10 and CBM2013-00058, Paper 9 (March 7, 2014).

The Board denied IPR trial in Gracenote, Inc. v. Iceberg Industries LLC, IPR2-13-00552 (March 7, 2014).

Proceedings Terminated

The Board terminated the Trial in Research in Motion Corporation v. MobileMedia Ideas LLC, IPR2013-00117, Paper 65 (March 7, 2013), after determining that it could not construe the means-plus-function limitations in the claims.

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (March 7, 2014), the Board provided detailed guidance on motions to amend.  Considering that not a single motion to amend has been granted, the patent owners will not doubt appreciate the effort, but the fact that the explanation of the rules itself takes 5 pages of 14-point double spaced type, illustrates the near impossivility of preparing an acceptable motion to amend, including the text of the amended claims, in tje fifteen pages alotted.

1. There should be no “amending in place.” Any claim with a changed scope, subsequent to the amendment, should be included in the claim listing as a proposed substitute claim, and have a new claim number.

2. A motion to amend claims may only cancel claims or propose substitute claims. The request to cancel claims will not be regarded as contingent.

3. Each proposed substitute claim must be reproduced in the claim listing, and the claim listing should be set forth in the motion itself, and not a claim appendix. For each proposed substitute claim, the motion must show, clearly, the changes of the proposed substitute claim with respect to the original patent claim which it is intended to replace. No particular form for showing changes is required, but the Board suggests the use of brackets to indicate deleted text and underlining to indicate inserted text.

 4. Although there is a presumption that only one substitute claim is needed for each original patent claim, this does not mean the patent owner is in compliance so long as the total number of claims before and after the amendment remain the same. The requirement is viewed on a per claim basis.

5. A proposed substitute claim should be responsive to the ground of unpatentability applicable to the original patent claim for which it is a substitute. 37 C.F.R. § 42.121(a)(2)(i). Generally, that means the proposed substitute claim should not eliminate any feature or element of the original patent claim which it is intended to replace. If there is a special circumstance to justify deviation from that general rule, the motion should provide adequate and persuasive explanation. A proposed substitute claim may not enlarge the scope of the patent claims. 37 C.F.R. § 42.121(a)(2)(ii).

6. The patent owner bears the burden of establishing that it is entitled to the relief requested in the motion to amend. 37 C.F.R. § 42.20(c). However, explaining patentability over references applied by the petitioner against the original patent claims is not the “main event”. The patent owner must show patentability over the prior art in general, and not just over the references applied by the petitioner against the original patent claims.  The motion should provide sufficient underlying facts regarding any feature added by the proposed substitute claim. For instance, it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim. If any such combination was known, the motion should explain the surrounding facts in that regard, and why it would not have been obvious for one with ordinary skill in the art to adapt that knowledge for use with the rest of the claim elements.

The patent owner is not expected to know everything that a hypothetical person of ordinary skill in the art is presumed to know, but the patent owner is expected to reveal what it does know, to the extent that it is relevant. There should be a discussion of the ordinary skill in the art, with particular focus on the feature added to provide the basis of patentable distinction. The discussion should be specific about the technical knowledge pertaining to the feature added, including whether there are textbooks or conventional practices relating to the feature, and what basic skillset would be possessed by one with ordinary skill in the art. A conclusory statement to the effect that the closest prior art are the references in the record is not meaningful.

7. In the motion to amend, the patent owner must show written description support in the original disclosure of the application as filed for each proposed substitute claim. 37 C.F.R. 42.121(a)(2)(ii). 　It is inadequate to show support for just the feature added by the proposed substitute claim, the patent owner must show written description support for the entire combination claimed.

8. The patent owner should provide a proposed claim construction of any new term used in a proposed substitute claim, the meaning of which reasonably can be anticipated as subject to dispute.　 If a proposed substitute claim adds a means-plus-function element, the corresponding structure, material, or acts described in the specification should be identified. If a term should be given its plain and ordinary meaning, it should be expressly defined in the motion, together with the supporting evidence.

In Research in Motion Corporation v. MobileMedia Ideas LLC, IPR2013-00117, Paper 65 (March 7, 2013), the Board terminated the Trial after determining that it could not construe the means-plus-function limitations in the claims.  The Board noted that the disclosure of a general purpose computer was insufficient to support computer-based means-plus-function elements without disclosure of the algorithm. The Board found that it could not evaluate the claims, if it could not construe them, and therefore terminated the trial.  While the Board cannot invalidate claims under Section 112 in an inter partes review, it has nonetheless, marked these claims for invalidation

In Commscope, Inc, v. Pangrac and Associates, IPR2013-00461, Paper 11 (March 5, 2014), the Board reminded the parties how to settle an IPR.  Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, explaining that the rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and filed with the Board.  37 C.F.R. § 42.74.

The Board explained that a joint motion must: (1) include a brief explanation as to why termination is appropriate; and (2) confirm the absence of any related district court litigation involving the patent in dispute.  The Board reiterated that the joint motion to terminate must be accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and said that a redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.

The settlement areement can be treated as business confidential 37 C.F.R. § 42.74(c), the parties must file the settlement agreement electronically in the Patent Review Processing System (PRPS) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).  Detailed instructions can be found in FAQ G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp: