New Filings

IGB Automotive Ltd. filed IPR2014-00661 challenging U.S. Patent No. 7,735,932.

IGB Automotive Ltd. filed IPR2014-00663 challenging U.S. Patent No. 7,775,602.

IGB Automotive Ltd. filed IPR2014-00664 challenging U.S. Patent No. 8,360,517.

Presence Technology LLC filed IPR2014-00665 challenging U.S. Patent No 6,804,346, assigned to Interactive Intelligence.

IGB Automotive Ltd. filed IPR2014-00666 challenging U.S. Patent No. 7,229,129 assigned to W.E.T. Automotive Systems, AG.

IGB Automotive Ltd. filed IPR2014-00667 challenging U.S. Patent No. 7,637,573 assigned to W.E.T. Automotive Systems, AG.

IGB Automotive Ltd. filed IPR2014-00668 challenging U.S. Patent No. 6,840,576 assigned to W.E.T. Automotive Systems, AG.

Institution Decisions

In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00121, Paper 13 (April 16, 2014), the Board instituted a trial as to claims 1-4 and 13-20 (all of the challenged claims) of Patent No. US 6,069,839.

In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00202, Paper 11 (April 16, 2014), the Board instituted a trial as to claims 1-7, 12-17, 19, and 20 (all of the challenged claims) of Patent No. US 6,292,403.

In Sony Computer Entertainment America LLC v. Game Controller Technology LLC, IPR2013-00634, Paper 11 (April 16, 2014), the Board instituted an inter partes review of claims 1-11 (all the challenged claims) of U.S. Patent No. 8,094,885.

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00180, Paper 10 (April 16, 2010), the Board instituted inter partes review fo claims 1-11 of U.S. Patent No. 7,634,666.

Termination Decisions

In The Brinkmann Corporation v. Coprecitec, S.L., IPR2013-00435, Paper 20 (April 16, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Atrium Medical Corporation v. Davol, Inc., IPR2013-00189, Paper 64 (April 15,2014), the Board terminated the Inter partes review on the joint motion of the parties.

New Filings

HTC Corporation filed IPR2014-000640 challenging claism 1-27 of U.S. Patent No. 7,856,314, assigned to Telecommunication Systems, Inc.

Institution Decisions

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-000057, Paper 9 (April 15, 2014), the Board instituted inter partes review of claims 1-4, 29-33, 35, and 41 of U.S. Patent No. 5,978,791.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-000058, Paper 9 (April 15, 2014), the Board instituted inter partes review of claim 166 of U.S. Patent No. 8,099,420

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-000059, Paper 9 (April 15, 2014), the Board instituted inter partes review of claims 10, 15, 16, 18, 25, 31-33, 36, and 38 of U.S. Patent No. 6,415,280.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-000062, Paper 9 (April 15, 2014), the Board instituted an inter partes review of claims 1, 2, 5-8, 10-12, 14, 16-19, 24, 29, 32, 70, 81, 82, and 86 of U.S. Patent No. 7,802,310

In Voltage Security, Inc. v. Protegrity Corporation, CBM2014-0024, Paper 11 (April 15. 2014) the Board instituted a CBM as to claims 1, 2, 12, 17, 21, 32, 33, 38, 45, 47, 53, and 58 (all of the challenged claims) of U.S. Patent No. 8,402,281.

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Tela Innovations. Inc., IPR2014-00094, Paper 11 (April 15, 2015), the Board instituted an inter partes review of claims 1-16 (all of the challenged claims) of U.S. Patent No. 8,490,043.

Denial Decision

In Apple Inc. v. Rensselaer Polytechnic Institute, IPR2014-00077, Paper 12 (April 15, 2014) the Board denied inter partes review of claims 1-21 (all of the challenged claims) of U.S. Patent No. 7,177,798.

New Filings

Conopco, Inc. filed IPR2-14-00628 challenging claims 1-23 of U.S. Patent No. 6,649,155, assigned to The Procter & Gamble Co.

Terminations

In Atrium Medical Corporation v. Davol, Inc., IPR2013-00187, Paper 74 (April 16, 2014), the Board terminated the trial without rendering a final written decision in view of the settlement between the parties.

In Atrium Medical Corporation v. Davol, Inc., IPR2013-00186, Paper 75 (April 16, 2014), the Board terminated the trial without rendering a final written decision in view of the settlement between the parties.

In Atrium Medical Corporation v. Davol, Inc., IPR2013-00185, Paper 66 (April 16, 2014), the Board terminated the trial without rendering a final written decision in view of the settlement between the parties.

In Atrium Medical Corporation v. Davol, Inc., IPR2013-00188, Paper 71 (April 16, 2014), the Board terminated the trial without rendering a final written decision in view of the settlement between the parties.

In Atrium Medical Corporation v. Davol Inc., IPR2013-00184, Paper 65 (April 15, 2014), the Board terminated the proceeding based upon the joint motion of the parties.

In Porsche Cars North America, Inc. v. Vehicle Interface Technologies, LLC, Paper 14 (April 15, 2014), the Board termianted the proceeding based upon the joint motion of the parties.

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00343, Paper 27 (April 15, 2014), the Board terminated the proceeding in response to the patent’s owners request for an adverse judgment with repsect to claims 1-6 of U.S. Patent No, 8,313,353 (all of the claims in the proceeding).

In Mobotix Corp. v. E-Watch Corporation, IPR2013-00335, Paper 35 (April 14, 2014), the Board denied the petitioner’s request to add two pinpoint citations to its reply brief, which the petitioner claimed were inadvertently omitted, but were referenced in the accompanying expert declaration.  The patent owner argued that the changes would constitute a substantive alteration of the Reply Brief after its due date, and thus be prejudicial to Patent Owner, and the Board Agreed, apparently following the old card game rule: What’s laid is played.

in BioMarin Pharmaceutical Inc. v. Genzyme Therapeutic Products Limited Partnership, IPR2013-00534, Paper 32, IPR2013-00537, Paper 31 (April 11, 2014), the patent owner sought to take video cross examination of the petitioner’s experts.  The Board said that by recording the deposition, Patent Owner is only preserving an opportunity for the panel to review the video, and authorized the video taping of the depositions at Patent Owner’s expense. The board pointed out that the authorization did not extend to the filing of the video-taped deposition transcripts, for which separate authorization is required under 37 C.F.R. § 42.53.

The Board has been stingy granting additional pages for submissions, but in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00345, Paper 32 (April 11, 2014) the Board granted petitioner an additional 5 pages to respond to the Patent Owner’s response in view of the large volumne of evidence of commercial success presented by the patent owner (who did not object).

In Facebook Inc. v. Software Rights Archive, LLC, IPR2013-00479, Paper 28 (April 9, 2014) the patent owner asked for leave to cross-examine petitioer’s expert witness for a total of 14 hours, in view of the fact that there were four separte petitions challenging three patents.  The petitioners objected.  The Board noted that unless stipulated by the parties or ordered by the Board, cross-examination shall be subject to a seven hour time limit. 37 C.F.R. § 42.53(c)(2). However, as the patent owner noted, the petitioner’s expert was a declarant in four proceedings, i.e., IPR2013-00478, IPR2013-00479, IPR2013-00480, and IPR2013-00481. The Board concluded that the patent owner’s request for more than seven hours was reasonable, and granted patent owner up to fourteen hours for cross-examination.

As of April 4, 2014, more than 1000 petitions for inter partes review have been filed.  Since the first day, inter partes reviews have taken off with a steady stream of patent challenges:

How have these petitions been disposed of?  About 81% of them are still pending, 11% were not instituted, 4% settled after institution, and 4% have ended in final written decisions.

Of the 11% (108) Petitions that have not resulted in the institution of trial, 41% (44) were denied on the merits, 23% (25) were denied as time-barred, 31% (33) were settled, and 4% (4) were abandoned by the patent owner.

In Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00347, Paper 32, IPR 2013-00340, Paper 34 (April 3, 2014), the Board instructed the parties two try again to resolve their issues before it ruled on their motions to seal.  The Board remindered the parties that determining a motion to seal involves striking a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information. See Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). A proper Motion to Seal must address the public’s interest in that regard, and should not end with merely establishing that the information sought to be sealed is confidential business information.