Institution Decisions

In AVX Corporation v. Greatbatch, Ltd., IPR2014-00697, Paper 13 (October 27, 2014), the Board instituted inter partes review of claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 of U.S. Patent No. 5,905,627 (but not as to challenged claims 3, 5, 8, 12, 21, 22, 24, and 27–29).

Dispositions

In Delta Air Lines, Inc. v. Loyalty Conversion Systems Corporation, CBM2014-00095, CBM2014-00096 (October 27, 2014), the Board terminated the covered business method reviews on the joint motion of the parties.

In Google Inc. v. Arendi S.A.R.L., IPR2014-00452, Paper 16 (October 27, 2014), the Board advised the patent owner on addressing dependent claims when an independent claim is amended.  The Board advised the patent owner that that it could propose substitute dependent claims that include the same limitations as the original dependent claims 2–79 but depend from proposed substitute new independent claim, and that if these claims are the same as the original claims except that they depend from a proposed substitute independent claim, the patent owner can list the proposed substitute dependent claims in a claims appendix, which would not count toward the fifteen page limit for motions to amend.

In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics where the Board allows discovery.  Similarly in General Electric Company v. TransData, Inc., IPR2014-01380, Paper 12 (October 20, 2010) the Board allowed the patent owner to move for additional discovery regarding the real party in interest.

In Edmit Industries, Inc., v, Smartdoor Holdings, Inc., IPR2015-00013, Paper 3 (October 20, 2014) another petitioner was caught slipping argument into its claim charts, and give five business days to file a corrected petition.

Several of the Board’s decisions in inter partes reviews are now on appeal.  The statute specifically allows the Patent Office to intervene, which is bit like allowing a district court judge to intervene in the appeal of a DJ or infringement case.  The Office has intervened in several of the appeals, and in each one, has come to the astonishing conclusion that the Board got it right:

In re Cuozzo Speed Technologies, 2013-1301; Helferich Patent Licensing v. CBS Interacative, 2104-1556; Softwview LLC v. Kyocera Corporation.  Well then, if everything is sound, I guess the Federal Circuit work is done!

How the Office’s participation will facilitate appellate review or advance the administration of justice remains to be seen.

In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 18, (October 17, 2014), the Board denied petitioner authorization to file a motion to stay prosecution of Patent Owner’s continuation patent application.  The Board said that whether any of the claims in the patent will be canceled is an issue that is not yet decided and will not necessarily be decided until a final written decision is entered.  “To bar Patent Owner from prosecuting claims now that may be patentably indistinct from the claims under review thus would be premature.”  The Board said it was sufficient for Patent Owner to continue to take reasonable steps to apprise the Examiner of the status of this proceeding.

In Microsoft Corporation v. Cellular Communications Equipment LLC, IPR2015-00011, Paper 3, (October 17, 2014), the Board gave Microsoft’s petition a filing date but required Microsoft to re-file the Petition because it contained singled spacing.  In a clear breach of double spacing etiquette, the identification of claims challenged on pages 3-4 and a footnote on page 50 were single spaced.  Don’t interfere with the orderly review of patents — double space everything!

In Seoul Semiconductor Co., Ltd. v. Enplas Corporation, IPR2014-00605, Paper 13 (October 16, 2014), the Board authorized the Patent Owner to move for additional discovery about testing that Petitioner conducted .  The Board noted that “[u]nder 37 C.F.R. § 42.65(b), If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining: (1) Why the test or data is being used; (2) How the test was performed and the data was generated; (3) How the data is used to determine a value; (4) How the test is regarded in the relevant art; and (5) Any other information necessary for the Board to evaluate the test and data.”  The Board settled the other discovery issues as it usually does, suggesting that the parties cooperate and authorizing the patent owner to again request permission to file another request for additional discovery.

When a patent owner objects to the evidence submitted by the Petitioner, the Patent owner should serve (but not file) objections within ten days of the institution of the proceeding.  37 C.F.R. § 42.64(b)(1).  In SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00679, Paper 15, IPR2014-00680, Paper 15 (October 15, 2014) the Board reminded the patent owner of this fact, expunging the objects filed by the patent owner.  The Board explained:

The Board’s Rules do not require, nor have we authorized, the parties to file objections to evidence with the Board. See SIPNet EU SRO v. Straight Path IP Group, Inc., Case No. 2013-00246, slip op. 3 (PTAB Dec. 12, 2013) (Paper 28). Such objections, and any supplemental evidence served in response, are only to be filed with the Board in the event they later become the basis of a Motion to Exclude Evidence. See Sealed Air Corp. v. Pregis Innovative Packaging, Inc., Case IPR2013-00554, slip op. 2–3 (PTAB Apr. 1, 2014) (Paper 18).

The only way for patent owner to respond to testimony presented in a petitioner’s reply is through a Motion for Observations.  A motion for observation on cross-examination is a mechanism to draw the Board’s attention to relevant cross-examination testimony of a reply witness. The observation must be a concise statement of the relevance of precisely identified testimony to a precisely identified argument or portion of an exhibit (including another part of the same testimony).  In Medtronic, Inc. v. NuVasive, Inc., IPR2013-00507, Paper 33,  IPR2013-00508, Paper 37, (October 15, 2014), the Board found that the motions for observations filed by patent owner “contain arguments and are excessively long, and, thus, improper.”  The Board expunged the Motions, but graciously allowed patent owner a chance to file corrected Motions.