Institution Decisions

In Butamax(TM) Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00581, Paper 8 (October 14. 2014), the Board denied inter partes review of claims 5 and 10 of U.S. Patent No. 8,273,565, and further denied joinder with a prior proceeding.

Dispositions

In Microsoft Corporation v. Surfcast, Inc., IPR2013-00292, IPR2013-00293, IPR2013-00294, and IPR2013-00295, Paper 33 (October 14, 2014), the Board issue a final written decision finding that claims 1–52 (all of the challenged claims) of U.S. Patent No. 6,724,403 were unpatentable.

It is common for petitioners to file multiple petitions challenging a patent.  The chief advantage of this strategy is an additional 60 pages of argument for each additional petition filed.  Sometimes, however, the petitioner will follow up with a second petition to mop up the claims it “missed” in an earlier petition.  The Board has been increasingly sensitive to this, finding that it is really just an improper request for rehearing of a question already decided.  This was the case in Butamax(TM) Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00581, Paper 9 (October 14, 2014), where the Board denied Butamax’s petition calling it “an attempt to request rehearing of a prior decision instituting trial, outside the time period provided in our Rules for such requests” and citing Microsoft Corp. v. Enfish, LLC, Case IPR2014-00577, slip op. at 8 (PTAB Sept. 29, 2014) (Paper 12) (denying second petition that is “essentially a rehearing request”).

In Searchmetrics, Inc. Brightedge Technologies, Inc., IPR2014-01517, Paper 3 (October 6, 2014), the Board gave the petition a filing date, but required petitioner to resubmit an exhibit with the proper label.  The Board continues to be very particular.

New Filings

Tiffany and Company filed IPR2015-00024 challenging U.S. Pat. 6,476,351

Actifio, Inc. filed IPR2015-00025 challenging U.S. Pat. 8,161,077 assigned to DELPHIX CORP.

Actifio, Inc. filed IPR2015-00026 challenging U.S. Pat. 8,161,077 assigned to DELPHIX CORP.

VMware, Inc. filed IPR2015-00027 challenging U.S. Pat. 7,970,386 assigned to ACQUISITION, INC.

ZTE (USA), Inc. filed IPR2015-00028 challenging U.S. Reissue Pat. RE040,385

ZTE (USA), Inc. filed IPR2015-00029 challenging U.S. Reissue Pat. RE044,507

VMware, Inc. filed IPR2015-00030 challenging U.S. Pat. 6,151,606 assigned to GOOD TECHNOLOGY CORPORATION

VMware, Inc. filed IPR2015-00031 challenging U.S. Pat. 8,012,219 assigned to GOOD TECHNOLOGY CORPORATION

New Filings

Edmit Industries, Inc. filed IPR 2015-00013 challenging U.S. Patent No. 6,484,784 assigned to Smartdoor Holdings, Inc.

Actifio, Inc. filed IPR2015-00014 challenging U.S. Patent No. 8,150,808 assigned to Delphix Corp.

T-Mobile USA, Inc. and T-Mobile US, Inc. filed IPR2015-00015 challenging U.S. Patent No. 5,915,210., assigned to Mobile Telecommunication Technologies

Actifio, Inc. filed IPR2015-00016 challenging U.S. Patent No. 8,150,808 assigned to Delphix Corp.

T-Mobile USA, Inc. and T-Mobile US, Inc. filed IPR2015-00017 challenging U.S. Patent No. 5,590,403, assigned to Bell Industries, Inc.

T-Mobile USA, Inc. and T-Mobile US, Inc. filed IPR2015-00018 challenging U.S. Patent No. 5,659,891, assigned to Bell Industries, Inc.

Actifio, Inc. filed IPR2015-00019 challenging U.S. Patent No. 8,150,808 assigned to Delphix Corp.

In Sony Mobile Communications (USA) Inc. v. ADAPTIX, INC., IPR2014-01524, Paper 5, IPR2014-01525, Paper 4 (October 1, 2014),  the Board granted a filing date to the petition, but noting the absence of the signer’s name and registration number, gave petitioner five days to correct the petition.  The Board also pointed out that the Exhibits in ‘01524 lacked proper labels.

Institution Decisions

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Zond, LLC, IPR2014-00781, Paper 13 (October 1, 2014), the Board instituted inter partes review of claims 20, 21, 34–36, 38, 39, 47, and 49 of U.S. Patent No. 7,147,759 (all of the challenged claims).

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Zond, LLC, IPR2014-00782, Paper 11 (October 1, 2014), the Board instituted inter partes review of claims 22–33, 37, 46, 48, and 50 of U.S. Patent No. 7,147,759 (all of the challenged claims).

In Digital Ally, Inc. v.  Utility Associates, Inc., IPR2014-00725, Paper 7 (October 1, 2014), the Board instituted inter partes review of claims 1–7 and 9-25 of U.S. Patent No. 6,831,556 (but not as to challenged claim 8).

In Torrent Pharmaceuticals Limited v. Merck & Co., Inc., IPR2014-00274, Paper 8 (October 1, 2014), the Board denied inter partes review of claims 1 and 2 of U.S. Patent 6,448,274.

In SkyHawke Technologies, LLC v. L and H Concepts, L.L.C., IPR2014-01485, Paper 6 (September 30, 2014), the petitioner submitted a request for joinder of the proceeding with IPR214-00438 that it previously filed, also challenging U.S. Patent No. 5,779,566.  Petitioner wanted the patent owner to file its preliminary response early, to facilitate catching the later filed proceeding with the earlier one.  The Board saw no reason why the Patent Owner should be required to submit its Preliminary Response in this proceeding earlier than what is required by 37 C.F.R. § 42.107(b). The Board did indicate that if the motion for joinder is granted, it will direct the parties to discuss the scheduling issue and attempt to agree on reasonable adjustments to the schedule for synchronizing this proceeding with the two related proceedings.

The Board did not mention the rift between some of the panels that have construed 35 USC 315 as not permitting joinder between proceeding filed by the same party.

In Apple Inc. v. Smartflash LLC, CBM2014-00112, Paper 7, and CBM2014-00112, Paper 7, (September 30, 2014), the Patent owner objected that petitioner’s filing two Petitions improperly circumvented the 80-page limit for covered business method review petitions.  The Board noted that the patent owner did not cite any authority to support its position, and noted the page limit for petitions requesting covered business method patent review is 80 pages (37 C.F.R. § 42.24(a)(iii)), and each of the 112 and the 113 Petitions is within that requirement.  To add insult to injure, the Board consolidated the two proceedings, presumably reducing the patent owner’s response to petitioner’s 160 pages of argument to a single 80-page response.  The same thing happened in Apple Inc. v. Smartflash LLC, CBM2014-00108, Paper 8, and CBM2014-00109, Paper 8, (September 30, 2014), decided the same day

In Microsoft Corporation v. Enfish, LLC, IPR2014-00574, Paper 13, IPR2014-00576, Paper 13, IPR2014-00577, Paper 13  (September 29, 2014), the Board denied Microsoft’s request to join the petition, with one of the prior inter partes reviews Microsoft filed against the same patent.  The joinder was essential for the petition to be timely.

Among other things, Enfish argued that joinder was not available because joinder only allows the addition of parties, and Microsoft was already a party.  The Board ducked the question by quoting the statute and concluding that “[T]he standard for joinder gives the Director discretion as to whether to join an inter partes review with another inter partes review. 35 U.S.C. § 315(c)” without expressly dealing with Enfish’s point that the statute explicitly says that parties can be joined, not petitions.  Other panels of the Board have agreed with Enfish.

The Board went on to conclude that Microsoft had not sufficiently shown that joinder was justified, and in its discretion, denied the motion for joinder.

Discretion may be the better part of valor, but here it simply allows the confusion over joinder to continue.