Correcting the Petition

Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00809, paper 28 (November 26, 2014), the  Board allowed the Petitioner to file a corrected Petition and Exhibit under 37 C.F.R. § 42.104(c), and based upon the corrected Petition and exhibit, added a claim to the inter partes review.  The Board instituted inter partes review for less than all of the challenged claims, and the petitioner sought hearing after discovering a clerical error in the petition and the exhibit.  However the Board pointed out that rehearing was not the appropriate remedy, rather petitioner should have sought to correct the petition (rehearing of the uncorrected erroneous petition would reach the same result).

Petitioner filed a motion to amend the petition and exhibit, and despite patent owners objections, the Board agreed that it was a clerical error that caused the petition and expert declaration to cite to the wrong portions of the prior art.  The Board allowed the amendment, and altered its institution decision to include an additional claim.

 

November 26, 2014

Institution Decisions

In CAO Group, Inc. v. The Procter & Gamble Company, IPR2-14-00796, Paper 18 (November 6, 2014), the Board denied inter partes review of  claims 1 to 13 of U.S. Patent No. 5,989,569.

In Global Tel*Link Corporation v. Securus Technologies, Inc., IPR2014-00810, Paper 8 (November 26, 2014) the Board instituted inter partes review of claims 1–8 of U.S. Patent No. 7,324,637.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2-14-00788, Paper 9 (November 26, 2014) the Board instituted inter partes review of  claims 10–20 (all of the challenged claims) of U.S. Patent No. 6,738,155.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00834, Paper 9 (November 26, 2014), the Board instituted inter partes review of 1–5 and 8 of U.S. Patent No. 8,482,274.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00836, Paper 9 (November 26, 2014), the Board instituted inter partes review of claims 1–5 and 8 of U.S. Patent No. 8,536,856.

In Nautique Boat Company, Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 (November 26, 2014), the Board instituted inter partes review of claims 1–5, 8–11, 13–16, and 18–20 of U.S. Patent 8,539,897 (but not challenged claims 6-7, 12, and 17).

Dispositions

In Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC., IPR2014-01438, Paper 11 (November 26, 2014), the Board terminated the inter partes review on the joint motion of the parties.

 

November 19, 2014

Institution Decisions

In Advanced Micro Devices, Inc.. v. Zond, LLC, IPR 2014-01072, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No. 6,805,779 (all of the challenged claims).

In Toshiba Corporation v. Zond, LLC, IPR2014-01070, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779.

In Toshiba Corporation v. Zond, LLC, IPR2014-01074, Paper 11 (November 19, 2014), the Board instituted inter partes review of claims 7, 9, 20, 21, 38, and 44 of U.S. Patent No. 6,805,779.

In Gillette Company v. Zond, LLC, IPR2014-01019, Paper 13 (November 19, 2014), the Board instituted inter partes review of claims 5, 6, 8, 19, 22, 23, and 43 of U.S. Patent No. 6,805,779.

Dispositions

In Ricoh Americas Corp. v. MPHJ Technology Investments, LLC, IPR2013-00302, the Board issued a Final Written Decision that claims 1–5 and 7–11 of U.S. Patent No. 7,986,426 (but not challenged claim 6) were unpatentable.

In Hayward Industries, Inc. v. Pentair Ltd., IPR2013-00285, Paper 47 (November 19, 2014), the Board issued a Final Written Decision that claim 12 of U.S. Patent No. 8,019,479 (the only challenged claim) was unpatentable.

In Hayward Industries, Inc. v. Pentair Ltd., IPR2013-00287, Paper 43 (November 19, 2014), the Board issued a Final Written Decision that claim 1 of U.S. Patent No. 7,704,051 (the only challenged claim) was unpatentable.

In Hewlett-Packard Company v. MPHJ Technology Investments, LLC, IPR2013-00309, Paper 35 (November 19, 2014), the Board issued a Final Written Decision that claims 1–12, 14, and 15 of U.S. Patent No. 6,771,381 (but not challenged claim 13) were unpatentable.

In SAP America Inc. v. Clouding Corp., IPR2014-00299, Paper 24 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

In SAP America Inc. v. Clouding Corp., IPR2014-00300, Paper 21 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

In SAP America Inc. v. Clouding Corp., IPR2014-00308, Paper 20 (November 19, 2014), the Board terminated the proceeding on the joint motion of the parties.

 

Novemer 18, 2014

Institution Decisions

In Fujitsu Semiconductor v. Zond, LLC, IPR2014-00918, Paper 13 (November 18, 2014), the Board instituted inter partes review of claims 5, 6, 8, 19, 22, 23, and 43 of U.S. Patent No. 6,805,779.

In Fujitsu Semiconductor v. Zond, LLC, IPR2014-00856, Paper 13 (November 18, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779.

Disposition

Focal Therapeutics, Inc. v. SenoRx, Inc., IPR2014-00116, Paper 32 (November 18, 2104), the Board terminated the inter partes review on the joint motion of the parties.

November 7, 2014

New Filings

2Wire Inc. filed IPR2015-00239 challenging U.S. Patent No, 7,471,721 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00240 challenging U.S. Patent No, 8,090,008 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00241 challenging U.S. Patent No, 8,073,041 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00242 challenging U.S. Patent No, 8,218,610 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00243 challenging U.S. Patent No, 8,355,427 assigned to TQ Delta, LLC.

2Wire Inc. filed IPR2015-00247 challenging U.S. Patent No, 7,292,627 assigned to TQ Delta, LLC.

Institution Decisions

In CustomPlay, LLC v. ClearPlay, Inc., IPR2014-00783, Paper 9 (November 7, 2014), the Board denied inter partes review of claims 1–43 (all of the claims) of U.S. Patent No. 7,577,970.

Dispositions

In SDI Technologies, Inc. v. Bose Corporation, IPR2013-00350, Paper 36 (November 7, 20140, the Board issued a Final Written Decision finding claims 1–21, 24, 27, 28, 30–48, 51, 54, 62, 63, 67–70, 73, 74, and 76 (all of the challenged claims) of U.S. Patent 8,401,682 unpatentable.

In SDI Technologies, Inc. v. Bose Corporation, IPR2013-00465, Paper 40 (November 7, 20140, the Board issued a Final Written Decision finding claims 1–21, 24, 27, 29–47, 50, 63, 64, 68– 70, 73, 74, 77, and 78 (all of the challenged claims) of U.S. Patent 8,364,295 unpatentable.

In Symantec Corporation v. RPOST COMMUNICATIONS LIMITED, IPR2014-00357, Paper 21 (November 7, 2014), the Board issued a final written decision, cancelling claims 9-20 of U.S. Patent 8,468,199 on the patentee’s motion.

In Game Show Network, LLC v. John Stephenson, IPR2013-00289, Paper 51 (November 7, 2014), the Board issued a Final Written Decision finding claims 1–19 of U.S. Patent No. 6,174,237 unpatentable.

 

Joinder Decisions

In The Gillette Company v. Zond LLC, IPR2014-00604, Paper 12 (November 7, 2014) the Board granted Taiwan Semiconductor Manufacturing Company, Ltd., TSMC North America Corp., Fujitsu Semiconductor Limited, and Fujitsu Semiconductor America motion to join IPR2014-01482 with IPR2014-00604.

November 6, 2014

New Filings

Lord Corporation filed IPR2015-00246 challenging U.S. Patent No. 8,373,559.

Institution Decisions

In Compass Bank v. Intellectual Ventures II, IPR2014-00724, Paper 12 (November 6, 2014), the Board instituted inter partes review of claims 18–31 (the “challenged claims”) of U.S. Patent No. 5,745,574.

Rehearing Decisions

In Sony Corporation v. YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00218, Paper 55 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00219, Paper 62 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00327, Paper 17 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Sony Corporation v YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF JERUSALEM, IPR2013-00326, Paper 19 (November 6, 2014), the Board denied rehearing of its Final Written Decision finding certain claims unpatentable.

In Dorman Products, Inc., v, Paccar Inc., IPR2014-00542, Paper 12, (November 6, 2014), the Board denied rehearing of its decision not to institute IPR of US Patent No. D525,731.

 

 

November 5, 2014

New Filings

Unified Patents Inc. filed IPR2015-000232 challenging U.S. Patent No. 7,702,781, assigned to Teoco Corporation.

Institution Decisions
In BioDelivery Sciences International, Inc. v. MonoSol Rx, LLC, IPR2014-00794, Paper 7 (November 5, 2014), the Board denied inter partes review of claims 1–29 of U.S. Patent No. 8,652,378.

Dispositions

In Dyaco International Inc.v. Johnson Health Tech. Co., Ltd., IPR2013-00754, Paper 8 (November 5, 2014), the Board terminated the inter partes review on the joint motion of the parties, before trial was instituted.

In CustomPlay, LLC v. Clearplay, Inc., IPR2013-00484, Paper 29 (November 6, 2014), the Board issued a Final Written Decision that claims 16, 27, 28, 30–34, and 40 of U.S. Patent No. 7,577,970 we not show to be invalid.

 

 

 

 

 

 

Amendment of a Petition Denied, Although it May Be Possible

In National Environmental Products Ltd. v. Dri-Steem Corporation, IPR2014-01503, Paper 11 (November 4, 2014), the Board denied the petitioner’s request to file an amended petition. The Board noted that it’s procedures for amendment of a Petition typically are limited to correction of a clerical or typographical mistake. 37 C.F.R. § 42.104(c). Nevertheless, the Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by the applicable rules. However, the Board was not persuaded, Petitioner should be authorized to submit the proposed supplemental information in a revised Petition.

The Board said that the original petition should have included all of the asserted grounds of unpatentability. 37 C.F.R. § 42.104(b). The Board said that the law requires that a petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Board found that the Petitioner did not explain sufficiently during the call why the information was not include in its petition.

November 3, 2014

Dispositions

In Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 62 (November 3, 2014), the Board issued a Final Written Decision holding that claims 111–114 of U.S. Patent No. 7,783,299 B2 are unpatentable.