Neste Oil Oyj v. Syntroleum Corporation, IPR2013-00578, Paper 13 (April 3, 2014), is notable because of the peculiar circumstance. The Board held the initial hearing in the case in person, at the final hearing of an inter partes review between the same parties.
Category Archives: Inter Partes Review
Additional Discovery is Still Hard to Come By
GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00051, paper 17 (April 3, 2014, the Board authorized Patent Owner to file a motion for additional discovery, directed solely to the real parties in interest in the instant proceedings, no later than April 7, 2014. The Board cautioned the patent owner that a motion for additional discovery is unlikely to be granted if it is unduly broad and is written in the style of a district court litigation request for “all documents in the possession, custody, or control of GEA that discuss, refer to or relate to . . . .” Such a request is unlikely to be found sufficiently narrowly tailored under the factors considered in deciding whether discovery is “necessary in the interest of justice.” The Board directed the patent owner to Garmin Int’l, Inc. et. al. v. Cuozzo Speed Techs. LLS, IPR2012-00001; (“Decision on Motion for Additional Discovery”) (Paper 26); Apple Publishing v.Achates Reference , Inc., IPR2013-00080 (Paper 18); Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, IPR2013-00601 (Paper 23); Nichia Corp. v. Emcore Corp. , IPR2012-00005 (Paper 19).
The Board said that the motion should address what evidence shows that petitioner and the identified entities have discoverable evidence that is relevant to determining whether any of those entities are real parties in interest of Petitioner who have been served with a complaint for patent infringement such that a section 315(b) bar would apply.
April 1, 2014
Institution Decisions
In Crocus Technology S.A. v. New York University, IPR2013-00047, Paper 8 (April 1, 2014) the Board instituted a trial as to claims 1-12, 14-20, 22-31, and 33-35 of U.S. Patent No. 6,980,469, but not as to claims 13 and 32.
In Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084 Paper 12, (April 1, 2014) the Board intituted a trial as to claims 1, 2, 4, 6-9, and 11-17 of U.S. Patent No. 8,361,235.
Trials Terminated
In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00422 Paper 33, IPR2013-00423, Paper 35(April 1, 2014), the Board terminated the trial because the parties reached a settlement before the patent owner’s response was due.
Mother, May I?
Mobotix Corp. v. E-Watch Corporation, IPR2013-00335, Paper 30 (April 2, 2014) the Board expunged the patent owner’s motion for leave to file an Amended patent owner response, because the patent owner did not seek leave to file the motion to seek leave. As the Board has made clear, virtually every motion should be discussed with the Board prior to filing.
Trust, But Verify
In Ikaria, Inc. v. GENO LLC, IPR2013-00253, Paper 20, (April 1, 2014) in lieu of granting petioner additional discovery based upon allegations that the patent owner had not undertaken a reasonable search for information inconsistent with a positon advanced by it, the Board ordered patent owner’s counsel to file a signed certification that:
Upon reasonable search and inquiry, any relevant, nonprivileged information that is inconsistent with a position advanced by Patent Owner during this proceeding, has been produced or does not exist.
Board Lets Patent Owner File A Surreply.
In Zodiac Pool Systems, Inc.v. Aqua Products, Inc., IPR2013-00159, Paper 51 (March 28, 2014), the Board allowed the patent owner to file a total of five pages to address the absense of secondary considerations raised by by Petitioner in its reply. The patent owner complained ot the Board that it was denied discovery on secondary considerations. The Board urged the parties to discusse further production, and after receiving additional documents the patent owner requested leave to file a surreply to discussse the commercial success of the ivnention, which the Board, granted.
March 28, 2014
New Filings
Dorman Products, Inc. filed IPR2014-00555 against U.S. Patent No. D526429 on a Surface Configuration of Truck Headlamp.
Final Decisions
In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00412, Paper 39 (March 28, 2014). The Board granted the parties joint motion to terminate in veiw of their settlement. The Board noted that the patent owner hat not yet filed its response, and found it appropiate to termiante the proceeding witout a written opinion, even though there was pending litigaiton invovling the patent and other parties who did not file their own Petition or attempt to joint the current inter partes review.
Trials Instituted
The Board instituted an IPR in Linvatec Corporation v. Bonutti Skeletal innovations LLC, 2013-00628, Paper 8 (March 28, 2014) as to claims 1 and 4–7 (all the challenged claims) of U.S. Patent No. 5,527,343.
Petioner’s Reply May Only Respond to the Patent Owner’s Arguments
In Amkor Technology, Inc. Tessera, Inc. IPR2013-00242, Paper 106 (March 27, 2014) the Board authorized the patent owner to file a Motion to Strike the petitioner’s reply on the grounds that it contained new matter. A reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012).
The Board found that the patent owner has made a threshold showing that petitioner in its reply is relying on a different embodiment of the reference from that which was relied on in the petition, adn thus briefing from the parties is warranted to determine whether the reply arguments properly respond to Patent Owner‟s response.
March 25, 2014
Institution Decisions
In Regions Financial Corporation v. Retirement capital Access Management Company LLC, CBM2014-00012, Paper 16, (March 25, 2014) the Board instituted a CBM against U.S. Patent No. 6,625,582., whihc was also the subject of CBM2013-00014.
Termination Decisions
In Raymarine, Inc. v. Navico Holding AS, IPR2013-00497, Paper 17 (March 25, 2014), the Board terminated in the IPR in view fo the joint motion filed by the parties. The Board noted that it instituted trial on February 11, 2014, and that it did not have before it full briefing on the trial issues and the Board has not entered a final decision, and thus it was appropriate to enter judgment without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72
March 21, 2014
Trials Instituted
The Board instituted an inter partes review of claims 1-31 of U.S. Patent No. 8,147,514 in Arthrex v. Bonutti Skeletal innovations LLC, IPR2013-00633, Paper 10 (March 21, 2014)
The Board institued an inter parties review of claims 1-6, 8-12, 18-20, 24, and 25 of U.S. Patent No. 6,970,183 (all of the challenged claims), in FLIR Systems, Inc. v. e-Watch, Inc., IPR2014-00139, Paper 12 (March 21, 2014).