TRW Automotive U.S. LLC v. Magna Electronics Inc.,  IPR2014-00251, Paper 13, IPR2014-00255, Paper 16, IPR2014-00256, Paper 15,IPR2014-00257 Paper 15, IPR2014-00258; Paper 15, IPR2014-00259 Paper 18, IPR2014-00260; Paper 18, IPR2014-00261 Paper 18, IPR2014-00262; Paper 14, IPR2014-00263 Paper 14, IPR2014-00264; Paper 14, IPR2014-00265, Paper 14, IPR2014-00266, Paper 16 (June 2, 2014).  The parties had entered into an agreement that service would be effected by email and Federal Express on December 17, but the patent owner emailed and federal expressed the Summons and Complaint on December 14.  Because these were not authorized methods of service, the Board determined that they were not effective until December 17, when the agreement of the parties authorized such service.  Thus the Board concluded that the petitions were timely filed within one year of service fo the Complaint.

Petitions Filed

JST Performance, Inc. d/b/a/ Rigid Industries filed IPR2014-00874 challenging U.S. Patent No. 6,250,774 assigned to U .S. PHILIPS CORPORATION

Apotex Corp.filed IPR2014-00876 challenging U.S. Patent NO. 6,417,191 assigned to VIIV HEALTHCARE UK LIMITED.

Homeland Housewares, LLC filed IPR IPR2014-00877 challenging U.S. Pat. 7,581,688 assigned to WHIRLPOOL CORPORATION

Seoul Semiconductor Co., Ltd filed IPR2014-00878 challenging U.S. Pat. 8,227,969 assigned to ENPLAS CORPORATION.

Seoul Semiconductor Co., Ltd filed IPR2014-00879 challenging U.S. Pat. 7,798,679 assigned to SHARP KABUSHIKI KAISHA and ENPLAS CORPORATION

Institution Decisions

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, IPR2014-00321, Paper 13 (June 2, 2014), the Board instituted an Inter Partes Review as to claims 40-42 and 44-47, but not claim 43, of U.S. Patent No. 7,806,896.

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC, IPR2014-00191,  Paper 12 (June 2, 2014), the Board instituted an Inter Partes Review as to claims 15-22, 26-28, and 31-36, but not claims 23-25 of U.S. Patent No. 7,837,736.

Wright Medical Group, Inc.v. Bonutti Skeletal Innovations LLC, IPR2014-00354,  Paper 10 (June 2, 2014) the Board instituted an Inter Partes Review as to claims 1 and 40, but not claims 13 and 25, of U.S. Patent No. 7,806,896.

Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00179, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 1, 2, 5, 9-12, 15, and 19 of U.S. Patent No. 7,124,646.

Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00178, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 1-12 of U.S. Patent No. 7,136,761.

Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00178, Paper 8 (June 2, 2014), the Board granted inter partes review of claims 17, 21, and 36, but not claims 24-26, of U.S. Patent No. 6,311,136.

Micro Motion, Inc. v. Schneider Electric SA, IPR2014-00167, Paper 10 (June 2, 2014), the Board granted inter partes review of claims 1, 6-8, 13-15, 20, and 21 of U.S. Patent No. 7,505,854.

Final Decisions

Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080, Paper 90, June 2, 2014) the Board found that claims 1-12 and 17-19 (all of the challenged claims) of U.S. Patent No. 6,173,403 were unpatentable.

Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00081, Paper 80, June 2, 2014) the Board found that claims 1-4 (all of the challenged claims) of U.S. Patent No. 5,982,889 were unpatentable.

In ACCO Brands Corporation v. Fellowes, Inc.,  IPR2013-00566, Paper 21 (May 30, 2014), the Board resolved how to handle the filign of a redacted transcript.  The Board diecided that the party wantign the redcations should file the transcript, and while the party takign the deposition should file the Exhibits, so that are correctly numbered.

In K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 36 (May 30, 2014), the Board reconsidered and modified its previous order allowing live testimony of the inventor.  On the patent owner’s motion, the Board previous ordered that the inventor live testimony would be received, consisting of 30 minutes of cross-examination by petitioner, followed by 30 minutes of redirect by patent owner.  The petitoner objected to this arrangement, arguing that it had nothing new to ask the inventor.  The Board rearraged the hearing so that the patent owner was allowed up to 30 minutes of direct testimony, followed by up to 30 minutes of cross examination by petitioner, with the Petitioner being entitled to use ot to 30 minutes of video recording of Mr, Orr’s deposition testimony.

While it is encouraging to see the Board allow for alternative hearing formats,the value os such live testimony is dubious, since the direct testimony “will be strictly limited to his declaration testimony,” and it puts petition in a awkward position of having to desigate cross examination testimiony in advnace of the direct testimony.  It wil be interesting to see how the June 17, 2014, final hearing goes.

Institution Decisions

First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc.,  IPR2014-00169, Paper 8, (May 30, 2014), the Board instituted inter partes review of  claims 15-22 (all of the challenged claims) of U.S. Patent No. 8,579,876.

Dispositions

comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 20 (May 30, 2014), the Board granted  the parties joint motion to terminate the inter partes review.

Institution Decisions

Pentair Ltd. v. Hayward Industries, Inc., IPR2014-00187, No. 11 (May 29, 2014). the Board instituted inter partes review of claims 1, 2, and 9 of U.S. Patent No. 8,281,425

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00220, Paper 18 (May 29, 2014) the Board instituted inter partes review of claims 1-5, 7-13, 15-20, 25-32, 39-42, 47, and 48 of U.S. Patent No. 7,859,565, but not claims 6, 14, 21-24, 33-28, 43-46, and 49.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00221, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 6, 8-10, 13-15, 27, 29-31, 36, 38, 39, 41-43, and 47-50 of U.S. Patent No. 7,991,522, but not claims 2-5, 7, 11-12, 16-26, 28, 32-35, 37, 40, and 44-46.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00222, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 3, 6, 8-11, 14-16, 18-29, 31, 32, 34, 36-41, 44, 46, and 48-50 of U.S. Patent No. 8,386,114, but not claims 2, 12-13, 17, 33. 35, 45, 47, 53-55, and 59.

Valeo, Inc. v. Magna Electronics Inc., IPR2014-00227, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 19 and 25-27, but not claims 1-18 and 20-24 of U.S. Patent No. 7,877,175, consolidating the proceeding and IPR2013-00228 between the same parties and involving the same patent.

Oracle Corporation v. MAZ Encryption Technologies LLC, IPR 2014-000472 (May 1, 2014), the Board granted petitioner’s request for a March 1 filing date because a PRPS system outage prevented petitioner from completing the filing until March 3.

In St. Jude Medical Cardiology Division, Inc., v. Volcano Corp., 2014-1183 (April 24, 2014), an appeal of the denial of inter partes review in IPR2013-00258, the Federal Circuit held that a decision not to institute is not appealable:

We hold that we may not hear St. Jude’s appeal from the Director’s denial of the petition for inter partes review. We base that conclusion on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on our jurisdictional statute read in light of those provisions.

New Filings

Petroleum Geo-Services, Inc. filed IPR2014-00678 challenging claim 14 U.S. Patent No. 6,6691,028, assigned to Westerngeco, LLC.

 Final Decisions

In Globus Medical, Inc. v. Altus Partners, LLC, IPR2014-00429 , Paper 10 (April 23, 2014) the Board terminated the trial pursuant to the joint motion of the parties, noting that the patent owner had not yet filed its preliminary statement, and that the litigation between the parties had been resolved.

Recent Board decisions denying rehearing:

Liberty Mutual Insurance Company v. Progressive Casualty Insurance Company, CBM2012-00003, Paper 85 (April 1, 2014)

Callidus Software Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 27, CBM2013-00053, Paper 22, and CBM2013-00054, Paper 25 (April 9, 2014)

Apple, Inc. v. Benjamin Grobler, IPR 2013-00060, Paper 15 (April 8, 2014).

Excelsior Medical Corporation v. Robert Lake, IPR2013-00494 Paper 12 (April 17, 2014)(denying rehearing of decision not to institute)

Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00556, Paper 20 (April 17, 2014)(denying rehearing of decision not to institute)

Athrex, Inc. v. Bonutti Skeletal innovations LLC, IPR2013-00631, Paper 20 (April 16, 2014)(denying rehearing of decision grant motion to correct the petition, and maintain the filing date).

Athrex, Inc. v. Bonutti Skeletal innovations LLC, IPR2013-00632, Paper 22 (April 16, 2014)(denying rehearing of decision grant motion to correct the petition, and maintain the filing date).

Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00583, Paper 13 (April 18. 2014)(denying rehearing of decision not to institute based upon priority date)

Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00591, Paper 10 (April 18, 2014)(denying rehearing of decision not to institute based upon priority date)

Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00590, Paper 17 (April 18, 2014)(denying rehearing of decision not to institute based upon priority date)

Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00592, Paper 16 (April 18, 2014)(denying rehearing of decision not to institute based upon priority date)

Yamaha Corporation of America v. Black Hills Media, LLC, IPR2013-00598, Paper 23 (April 18, 2014)(Denying rehearing of decision not to institute on one grounds)

Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00583, Paper 13 (April 18. 2014)

Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00557, Paper 19 (April 17, 2014)(denying rehearing of decision not to instutitue on one grounds)

Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00558, Paper 17 (April 17, 2014)(denying rehearing of decision not to instutitue on one grounds)

Yamaha Corporation of America v. Black Hills Media, LLC, IPR2013-00593, Paper 26 (April 28, 2014)(denying rehearing of decision not to institute on one grounds)

CaptionCall, L.L.C. v. Ultratec, Inc., IPR2013-00549, Paper 20 (April 28. 2014)(denying rehearing of decision not to institute as to claism 6 and 8).

Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., IPR2013-00573, Paper 17 (May 1, 2014)(denying rehearing of decision not to institute on certain grounds)

Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc.,  IPR2013-00572, Paper 17 (May 1, 2014)(denying rehearing of decision not to institute on certain grounds)