In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.  In the joint motion to terminate, the patent owner requested: “Patent Owner does not request dismissal of the review and requests that these proceedings advance to final written decision after Patent Owner is heard at final argument.”  The Board noted that “[g]enerally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.”  The Board said “The joint motion to terminate with respect to Petitioner does not persuade us that deviating from the general expectation of termination via settlement is warranted in this situation. At this stage in the proceeding, the record lacks full briefing, including Petitioner’s reply, and accordingly lacks “streamlin[ed,] and converg[ed]” issues, as necessary to render a decision in a “timely, fair, and efficient manner.”

In Wintek Corporation v. TPK Touch Solutions, Inc., IPR2013-00567, Paper  40, IPR2013-00568, Paper 41 (August 28, 2014), when petitioner arrived at the deposition of patent owner’s expert, it was surprised to find that the witness, who provided an English declaration, needed a translator.  The patent owner thoughtfully provided one, but petitioner wanted its own translator as a double check.  This could not be arranged on short notice, and the witness was not aviable for another deposition in the U.S. in the near future.  The parties approached to the Board for guidance, and the petitioner wanted reimbursement for its wasted costs.   The Board told the parties to work things out, and authorized the petitioner to move for its deposition costs if agreement could not be reached.

In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 46 (August 27, 2014), the Board denied the patent owner’s motion to exclude. The Board first review the proper procedure for objecting to, and moving to exclude, evidence: When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. See 37 C.F.R. § 42.64(b)(1). Once a trial has been instituted, an objection must be served within five business days.  C.F.R. § 42.64(b)(1).The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. C.F.R. § 42.64(b)(1). This process allows the party relying on the evidence to which an objection is served timely the opportunity to correct, by serving supplemental evidence within ten business days of the service of the objection. 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. 37 C.F.R. § 42.64(c).

The Board noted that the patent owner failed to indicate it served objections, and did not identify or explain its objections.  The Board denied the motion to exclude in view of the patent owner’s failure to comport with the requirements of 37 C.F.R. § 42.64.

.

Commercial Success

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Commercial success typically is shown with evidence of “significant sales in a relevant market.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (citation omitted). Furthermore, to establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.”  In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.”  Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”).

Copying 

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).

New Filings

SMART Modular Technologies Inc. filed IPR2014-01369 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01370 challenging U.S. Patent No. 8,301,833 assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01371 challenging U.S. Patent No. 8,516,187, assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01372 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01373 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01374 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

SMART Modular Technologies Inc. filed IPR2014-01375 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19, 2014 (August 22, 2014), the Board patent owner’s motion for additional discovery because it was persuaded that patent owner has shown, beyond mere speculation or possibility, that its requests would return something useful.  The Board noted that the patent owner provided bare assertions of an alleged commercial success without supporting those assertions with facts or other evidence, and failed to provide a threshold amount of evidence tending to show that there is a nexus between the alleged commercial success and the features of the proposed substitute claims.

The Board concluded that patent owner:

 has not provided a threshold amount of evidence of (1) sales allegedly amounting to commercial success, (2) an alleged nexus between the claimed inventions and any commercial success of Petitioner’s products, (3) evidence of efforts to replicate the features of the proposed substitute claims, or (4) evidence that Petitioner has the requested laudatory documents. Although a conclusive showing of any of these facts is not necessary at this stage, some evidence is needed to establish that there is more than a mere possibility that Patent Owner’s requests would uncover something useful.

.

In SCHOTT Gemtron Corporation SSW Holdings Company, Inc., IPR2014-00367, Paper 21 (August 21, 2014), the Board changed the filing date of the Petition to the date that all of petitioner’s papers, including the supporting declaration, were received.  Because this change may have made the petition untimely, the Board gave the petitioner time to file a motion for corrected filing date, referring the petitioner to ABB Inc. v. Roy-G-Biv Corp., IPR2013-00063, slip op. (PTAB Jan. 16, 2013) (Paper 21), and Conmed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624, slip op. (PTAB Feb. 21, 2014) (Paper 18), addressing motions to correct filed in similar circumstances.

Institution Decisions

In Google Inc. v. Arendi S.A.R.L., IPR2014-00450, Paper 10 (August 20, 2014), the Board instituted inter partes review of claims 1, 7, 10, 12, 16, and 20 of U.S. Patent No. 7,921,356, but not with respect to claims 2–6, 8, 9, 11, 13–15, and 17–19 (30% of the challenged claims).

In Google Inc. v. Arendi S.A.R.L., IP2014-00452, Paper 10 (August 20, 2014), the Board instituted inter partes review of claims 1–79 of U.S. Patent No. 6,323,853 (all of the challenged claims).

In Crocs, Inc. v. Polliwalks, Inc., IPR2014-00424, Paper 8 (August 20, 2014), the Board instituted inter partes reviwe of claims 1–19 of U.S. Patent No. 8,613,148 (100% of the challenged claims).

Dispositions

In LG Electronics Inc. v. NFC Technology, LLC, IPR2014-00959, Paper 12 (August 20, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In LG Electronics Inc. v. NFC Technology, LLC, IPR2014-00964, Paper 10 (August 20, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Ossur Americas, Inc. v. Otto Bock Healthcare LP, IPR2014-00145, Paper 29 (August 20, 2014) the Board terminated the inter partes review on the joint motion of the parties.

In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 12 (August 20, 2014) the Board  terminated the covered business method review on the joint motion of the parties.

SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2013-00358, Paper 106 (August 20, 2014) the Board found that claims 1, 13, and 25 of U.S. Patent No. 8,286,561 (all of the challenged claims) were unpatentable.

 Rehearing Decisions

In Eizo Corporation v. Barco N.V., IPR2014-00358, Paper 14 (August 20, 2014), the Board denied rehearing of its decision to institute inter partes review of claims 101–104 of U.S. Patent No. US RE43,707.

Institution Decisions

In Corning Optical Communications RF LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 10 (August 19, 2014) the Board instituted inter partes review of  claims 1, 8, 9, 11, 18–26, and 29 of U.S. Patent No. 8,597,041 (all of the challenged claims).

In Corning Optical Communications RF LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 10 (August 19, 2014) the Board instituted inter partes review of claims 31, 37, 39, 41, 42, 55, and 56 of U.S. Patent No. 8,562,366 (all of the challenged claims).

New Filings

EMC Corporation filed IPR2014-01309 challenging U.S. Patent No. 5,944,839 assigned to Stec IP, LLC.