New Filings
Medtronic, Inc. filed IPR2014-00487 challenging claims 1-14, 19, 20, and 23-27 of U.S. Patent No. 8,361,156 on Systems and Methods of Spinal Fusion, assigned to Nuvasive, Inc. As Medtronic explained in its Petition, it presents new arguments and provides new evidence to cure any noted deficiencies in Petitioner’s previously filed petition for IPR, IPR2013-00504, which was denied on February 13, 2014.
A party seeking to submit supplemental information more than one month after the date the trial is instituted must request authorization to file a motion to submit the information. The motion must show why the supplemental information reasonably could not have been obtained earlier, and the consideration of the supplemental information would be in the interests of justice. 37 C.F.R. § 42.123(b). In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00363, Paper 20 (March 5, 2014) the Board denied Petitioner’s requies to file supplemental information because counsel for Petitioner did not provide a reason sufficient to show why Petitioner cannot submit such evidence in connection with a Petitioner Reply to the Patent Owner Response. 37 C.F.R. § 42.23(b).
37 C.F.R. § 1.68 provides
Declarations may be presented in lieu of an oath: if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.
If the required statement is omitted it can, if caught in time, be corrented, but the process set forth in MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274, Paper 15 (March 5, 2014) can be tedious.
New Filings
Oracle Corporation filed IPR2014-00472 against MAZ Technologies LLC, challengnig U.S. Patent No. 7,096,358.
FLIR Systems, Inc. filed IPR2014-00411 against FURRY BROTHERS, LLC, challenging U.S. Patent No. 8,426,813.
FLIR Systems, Inc. filed IPR2014-00434 against LEAK SURVEYS, INC., challenging U.S. Paent No. 8,193,496.
Schrader International, Inc., filed IPR2014-00476 against LEEMANN, KARL,RUCHTI, HEINZ, challenging U.S. Patent No. 5,602,524.
Institution Decisions
The Board intiated an inter partes review in Microsoft Corporation v. Enfish, LLC, IPR2013-00559, Paper 14, as to claims 1-15 and 31-45 of U.S. Patent No. Patent 6,163,775.
The Board intiated an inter partes review in Microsoft Corporation v. Enfish, LLC, IPR2013-00563, Paper 14, as to claims 16-26, 30, 46-56, and 60 of the U.S. Patent No. Patent 6,151,604, but denying review as to 27-29 and 57-59.
The Board initiated an inter partes review in BUTAMAX™ Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00539, Paper 9, as to claims 1-9 and 11-19 of U.S. Patent No. 8,273,565.
The Board initaited an inter partes review in GoerTek Electronics, Inc. v. Knowles Electronics LLC, IPR2013-00523, Paper 10, as to claims 1, 2, 4, 5, and 11-13 of U.S. Patent No. 8,121,331.
The Board initaited an inter partes review in Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00538, Paper 8, as to claims 10 and 13 of U.S. Patent No. 5,949,438, but not as to 1, 2, 6, 8, and 11.
Institution Decisions
The Board issued a Decision instituting Inter Partes Review of U.S. Patent No. 5,796,411 in Xerox Corp. v. RR Donnelley & Sons Co., IRP2013-00529, Paper 15 (March 3, 2014). IPR was instittued as to claims 2, 4, and 6, but not claims 1 and 3.
The Board issued a Decision instituting Inter Partes Review of U.S. Patent No. 5,921,986 in Arthrex, Inc. v. Bonutti Skeletal Innovations, LLC., IPR2013-00631, Paper 15 (March 3, 2014). IPR was instituted as to all of the challenged claims: 64, 65, 67, 69, 70, 72–76, 80, 82, and 83.
Final Decisions
The Board issued a Final Written Decision in CBS Interactive Inc. v. Wireless Science, LLC in IPR2013-00033, finding claims 1, 3-5, 11, 13, 15, 16, 18, 20, 21, 23, 24, 26, 28, 29, 41, 43-45, 51, 53-56, 58, 60, 61, 71, 73-75, 81, 82, 84, 86, 87, 89, 91, 92, and 94 of U.S. Patent No. 7,155,241 invalid.
In Greene’s Energy Group, LLC v. Oil States Energer Services, LLC, IPR2014-00216, Paper 7, March 3, 2014, the Board reminded the patent owner that evidence in support of a preliminaryresponse may be submitted, provided that it does not constitute new testimonial evidence. 37 C.F.R. § 42.107(c). The Patent Owner may submit new testimony with Patent Owner’s full response to the Petition. The Board also cautioned that if a preliminary response is accompanied by a motion to seal, any redacted information cannot be utilized in the Board’s decision to institute a proceeding. Thus the patent owner should narrowly tailor any redactions to the information that is confidential, as well as consider other ways of presenting the confidential information that would not require redaction. Documents cannot be submitted under seal until a protective order preserving the confidentiality of designated information is submitted. 37 C.F.R. §§ 42.54-55.
Intel Corporation filed five inter partes reviews against the one patent: IPR2014-00443, IPR2014-00444, IPR2014-00445, IPR2014-00446, IPR2014-00447, all challenge U.S. Pat. 7,147,759 on HIGH-POWER PULSED MAGNETRON SPUTTERING owned by Zond, Inc. in 443, Intel used 60 pages to challenge claims 1, 4, 10-12, 17, 18 and 44 of the ’759 Patent; in 444 Intel used 60 pages to challenge claims 2, 3, 5-9, 13-16, 19, 41-43 and 45 of the ’759 Patent; in 445 Intel used 60 pages to challenge claims 20, 21, 34-36, 38, 39, 47 and 49 of the ‘759 Patent; in 446 Intel used 60 pages to challenge claims 22-33, 37, 46, 48, and 50 of the ’759 Patent; and in 447 Intel used 54 pages to challenge claim 40 of the ’759 Patent.
Google, Inc., filed IPR2014-00450 against U.S. Pat. 7,921,356, on METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR ADDRESSING HANDLING FROM A COMPUTER PROGRAM, owned by Arendi S.A.R.L.
Edwards Lifesciences Corp., filed IPR2014-00453 against U.S. Pat. 8,623,077 on APPARATUS FOR REPLACING A CARDIAC VALVE, owned by Medtronic, Inc.
Cisco Systems, Inc., filed IPR2014-00454 against U.S. Pat, 5,563,883 on DYNAMIC CHANNEL MANAGEMENT AND SIGNALLING METHOD AND APPARATUS owned by C-Cation Technologies, LLC.
The PTAB’s decision in Microsoft Corp. v. Proxyconn, Inc., IPR2013-00026, IPR2013-00109, Paper 73, (February 19, 2014) is notable because for the first time a challenged claim (claim 24) survived the IPR Process, although 8 of the 9 claims for which trial was instituted were found invalid. This makes the “kill” rate for patent claims in the first eight decisions 110/111 or 99.1%.
The other final written decisions so far are: Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 59 (November 13, 2013) all three of the claims for which trial was instituted were found invalid; Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 66 (January 7, 2014), all 23 of the claims were found invalid, 9 by concession by the patent owner, and 14 by decision of the Board; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00023, Paper 35 (February 11, 2014), all 19 claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00020, Paper 34 (February 11, 2014), all 12 of the claims for which trial was instituted were found invalid. Nicia Corp. v. Emcore Corporation, IPR2012-00005, Paper 68, (February 11, 2014), all 17 claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00019, Paper 33 (February 10, 2014), all 15 of the claims were found invalid; Intellectual Ventures Management, LLC v. XILINX, Inc., IPR2013-00018, Paper 35 (February 10, 2014), all 13 of the claims were found invalid.
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Decision Denying Institution
In Medtronic, Inc. v.Nuivasive, Inc., IPR2013-00504, Paper 8 (February 13, 2014) the Board denied inter partes review because the Petition did not explain how the prior art met the claim limitiations. The geometry of the prior art did not match the claimed geometry. The Board continues its careful review of the Petitions.
In Interthinx, Inc. v. Corelogic Solutions, LLC, CBM2012-00007, Paper 58 (January 30, 2014), the Board cancelled the claims 1, 6, 9, and 10 of U.S. Patent No. 5,361,201, even though the parties had reached a settlement, and the trial had already been terminated as to the Petitioner (See CBM2012-00007, Paper 47 (November 12, 2014). The joint motion to terminate was filed October 25, 2013, a month after the parties had requsted an Oral Hearing, and eight days after the Board issued its Trial Hearing Order, and three days before the scheduled hearing date. It is not clear precisely when a case has to be settled before the Board will simply dismiss the case, but it is clear that there is a point of no return