In Target Corporation v. Destination Maternity, IPR2014-00508, Paper 20 IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petitions as barred under 35 USC 315(b),finding that Target could not “join” its later filed petitions with its prior, timely filed petitions.  The Board found that joinder only allows parties to join, and a party cannot join a proceeding to which it is already a party.  The Board separately denied Target motion for joinder in IPR2014-00508, Paper 18, IPR2014-00509, Paper 18.

The Board provided a detailed analysis of Joinder under 35 U.S.C. 315(c), acknowledging prior decisions of the Board that reached a different result, allowing a party to “join itself” in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022 (September 2, 2014) (Paper 66); Samsung Elecs. Co. v. Virgina Innovation Scis., Inc., IPR2014-00557 (June 13, 2014); Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109 (Feb. 25, 2013) (Paper 15); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00286 (August 9, 2013) (Paper 14); Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00327 (September 24, 2013) (Paper 15).

Institution Decisions

In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00529, Paper 8 (September 23, 2014) the Board denied inter partes review of claims 13–24 and 37–47 of U.S. Patent No. 7,921,320.

In Samsung Electronics Co., Ltd. v.  Rembrandt Wireless Technologies, LP, IPR2014-00518, Paper 16 (September 23, 2014), the Board granted inter partes review of claims 1, 4, 5, 10, 13, 20–22, 54, 57, 58, 61, 62, 66, 70, and 76–79 of U.S. Patent No. 8,023,580, but not as to challenged claims 2, 19, 49, 52, 53, and 59.

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Dispositions

In Butamax(TM) Advanced Biofuels LLC v. Gevo, Inc, IPR2013-00214, Paper 46 (September 23, 2014) the Board issued a final written decision that claims 1–28 (all of the challenged claims) of U.S. Patent No. 8,304,588 are unpatentable.

Institution Decisions

In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00644, Paper 12 (September 19, 2014) the Board instituted inter partes review of claims 1–3, 11–20, 23, 27, 50, 51, 54, 60, and 61 of U.S. Patent No. 6,746,078, but not as to challenged claims 54-59.

Dispositions

In Research In Motion Corporation v. NXP B.V., IPR2013-00232, Paper 25 (September 19, 2014), the Board issued its Final Written Decision finding that claims 1–4 of U.S. Patent No. 5,639,697 (all of the challenged claims) have been shown to be unpatentable by a preponderance of the evidence.

In Finjan, Inc. v. FireEye, Inc., IPR2-14-00344, Paper 27, IPR2014-00492, Paper 18,  (September 18, 2014), the Board admonished the parties for their conduct of the proceeding:

We also take this opportunity to observe a general lack of courtesy and decorum from counsel for both parties. See Ex. 2004, 99:20–102:10; 164:14–165:22. The parties are strongly cautioned to follow all rules applicable to this proceeding, including that “[e]very party must act with courtesy and decorum, . . . including in interactions with other parties.” 37 C.F.R. § 42.1(c).

The trigger no doubt was the parties’ conduct at depositions,.  The Board specifically instructed the parties:

in any future deposition in this proceeding, the parties shall refrain from interrupting each other and the witness, and shall not make speaking objections. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012). In particular, counsel must not make objections or statements that suggest an answer to a witness and objections should be limited to a single word or term. Id. (emphasis added). Objections to form are properly stated as “Objection, form.”

Dispositions

In SAP America, Inc. v. Arunachalam, IPR2013-00194, Paper 60 (September 18, 2014), the Board issued a Final Written Decision finding that claims 1–6, 10–12, 14–17, and 35 of U.S. Patent No. 8,037,148 (all of the challenged claims) are unpatentable.

In SAP America, Inc. v. Arunachalam, IPR2013-00195, Paper 67 (September 18, 2014), the Board issued a Final Written Decision finding that claims 1–8 and 10–12 of U.S. Patent No. 8,108,492 (all of the challenged claims) are unpatentable.

In Hewlett-Packard Company v. MCM Portfolio LLC, IPR2013-00217, Paper 32 (September 12, 2014), after the issuance of its Final Written Decision, the Board lifted the stay it had imposed on a co-pending reissue, even though it was before the time for any appeal has expired and any appeal has terminated.

Motorola Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00500, Paper 12 (September 10, 2014) instituted inter partes review of claims 1, 4–6, 8, 10, 13–15, 17, 21, 24–26, 28, 30, 33–35, 37, 39, and 40 of U.S. Patent No. 5,790,793.

New Filings

Microsoft Corporation filed IPR2014-01457 challenging claims 6, 13, 14, 15, 16, 24, 25, 26, 27, 28, 29, 31, 32, 33, 34, 35, 36, 37, 41, 46, 82, 83, 84, 85, and 86 of U.S. Patent No. 8,144,182 assigned to Biscotti, Inc.

Microsoft Corporation filed IPR2014-01458 challenging claims 6, 7, 8, 12, 17, 18, 19, 20, 21, 22, 23, 38, 39, 40, 41, 42, 44, 45, 46, 50, 52, and 53 of U.S. Patent No. 8,144,182 assigned to Biscotti, Inc.

Microsoft Corporation filed IPR2014-01459 challenging claims 1, 4, 5, and 69-74 of U.S. Patent No. 8,144,182 assigned to Biscotti, Inc.

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 10 (September 5, 2014), the Board consolited two inter partes reviews directed to different but related patents. In IPR2014-00411 inter partes review was instituted as to claims 1-22, 31, 37-40, 42-56, and 58 of Patent No.8,426,813. In IPR2014-00434 inter partes review was been instituted as to claims 1-7 and 9-20 of Patent No. 8,193,496.

The Board noted that the claimed invention of the ’813 patent is to an apparatus and the claimed invention of the ’496 patent is to a method of using the apparatus, and the disclosure of the ʼ813 patent and the disclosure of the ʼ496 patent are essentially identical.  The Petitioner’s witness in both IPRs is the same and his Declaration testimony overlaps considerably.  The testimony of any additional witness in both IPRs is expected in large measure to overlap.  The Board concluded that in order to secure a just, speedy, and inexpensive resolution of both proceedings, 37 C.F.R. § 42.1(b), and in view of some common issues in both IPRs, trial in IPR ʼ411 and the trial in IPR ʼ434 will be consolidated. 37 C.F.R. § 42.5(a).

In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol, Limited, IPR2013-00309, Paper (September 4, 2014), petitioner sought (1) detailed sales records of the products covered and not-covered by the patent, (2) records of conception of the invention, (3) testimony and records relating to the identification of prior art.  The Board applied the Garmin Factors.  As to sales information, the Board found petitoner failed under the First Garmin Factor – demonstrating more that a possibility the inventof would be useful and the Fifth Garmin Factor — that resposne was not budensome.  As to conception, the Board denied the additional discovery under the Third Garmin Factor, the ability to generate the information by other means (i.e., already scheduled depositions), and the Fifth Garmin Factor, undue burden.  As to the identification of prior art, the Board denied discovery under the First Garmin Factor — a failure to show the discovery will lead to useful information.