New Filings

Samsung Electronics Co. Ltd filed IPR 2014-00514 challenging U.S. Patent No. 8,023,580, assigned to Rembrandt Wireless Technologies, LP.

Mitsubishi Plastics, Inc.filed IPR2013-00524 challenging U.S. Patent No. 6,432,586, assigned to J.P. Morgan Chase (as administrative agent).

Trials Denied

The Board denied an inter partes review in ZOLL Lifecor Corporation v. Philips Electronics North America Corp., IPR 2013-00616, Paper 12 (March 20, 2014) and in IPR2013-00609, Paper 15 (March 20, 2014.  The Board found that ZOLL Medical was the real party in interest, and because ZOLL Medical was time barred, and was not disclosed in the Petition, denied inter partes review.

New Filings

Target Corporation filed IPR2014-00508 challenging claims of U.S. Reissue Pat. RE043,563, and filed IPR2014-00509 challenging claims 1, 2, 5, 6, 10, 11, 15-19, and 24-29 of U.S. Reissue Pat. RE043,531, owned by Destination Maternity Corporation.

Final Written Decisions

The Board issued a final written decision in Denso Corporation v. Beacon Navigation GmbH, IPR2013-00026, Paper 24 (March 14, 2014),holding that claims 2, 3, 5, 6, 11-13, and 18-20 and 22 of U.S. Patent No. 6,029,111 (all of the claims still being contested) were invalid.

Suprisingly the Board granted a reprieve to a petitioner who uploaded the papers, but failed to complete the filing process.  In Linvatech Corporation v. Bonutti Skeletal innovations LLC, IPR2013-00624, Paper 22 (March 14, 2014), the Board denied patent owner’s request for rehearing of the Board’s decision to grant Petitioner’s renewed motion to correct the filing date accorded to the petition.  Petitioner uploaded the petition on September 25, 2013, but no one clicked the “submit” button until October 2, 2013, more than one year from service of an infringment complaint.  In its prelimary response, the patent owner argued the Petition was barrred.  The petitioner filed a motion to correct the filing date, which the Board denied with leave to refile.  The petitioner filed a renewed motion, which was granted, setting up the instant petition for rehearing by the patent owner.

The Board determined that Petitioner satisfied the statutory and regulatory requirements for filing a complete petition on September 25, 2013, but for clicking the “Submit” button in the Patent Review Processing System, and concluded that Petitioners’ inadvertent delay in clicking the “Submit” button until October 2, 2013, was a clerical error. On rehearing, the patent owner argued that Petitioner is not entitled to relief under 37 C.F.R. § 42.104(c) because it did not admit to making a clerical error. The Board noted that the rule “is remedial in nature and is therefore entitled to a liberal interpretation.” ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013). When, as here, the record supports a finding that a clerical error occurred, the Board may grant appropriate relief under 37 C.F.R. § 42.104(c) whether the party making the error admits to it or not. The Board also found it could grant relief under 37 C.F.R. § 42.5(b) to waive the regulatory requirement that electronic filing is completed only upon clicking the “Submit” button in PRPS.

Accordingly, Patent Owner’s request for rehearing was granted to the extent the Board modified its our prior decision to invoke 37 C.F.R. § 42.5(b), but was denied in all other respects.

After have its Petition for inter partes review of U.S. Patent No. 8,424,795 denied on all grounds, Lake applied for a partial refund of fees, whihc the Board granted in Lake Cable, LLC v. Windy City WIre Cable and Technology Products, LLC, UPR2013-00528, Paper 11 (March 10, 2014).

New Filings

Medtronic, Inc.filed IPR2014-00488 against U.S. Patent No. 7,769,605 (assigned to Robert Bosch Healthcare Systems, Inc.) challenging claims 1-9.  This is just the latest in a complext knot of district court litgation, reexaminations, and inter partes reviews.

Proceedings Termianted

In Commscope, Inc. v. Pangrac and Associates, IPR2013-00461, Paper 12, (March 6, 2013) the Board terminated the proceedings in view of the settlement reached between the parties.  The Board noted that trial was instituted on January 29, 2014, and is in the preliminary; the initial conference call with the Board to discuss the case has not been held; and there is no co-pending district court litigation. The Board concluded that under these circumstances “it is appropriate to terminate the trial without rendering a final written decision.”

In an Order for the Conduct of Proceedings in GSI Technology, Inc. v. Cypress Semiconductor Corporation, [IPR2014-00202], Paper 8 (February 27, 2014), the Board explained the process for correcting an Exhibit under  37 C.F.R. § 42.104(c).  After obtaniing authorization from the Board, a petitioner should file a mtion. Petitioner must support themotion with an affidavit setting forth (1) the nature of the error, (2) the manner inwhich the error is corrected, and (3) good cause for granting said motion.  Petitioner should confer with Patent Owner and indicate in its motion whether the motion is opposed. Lastly, the corrected exhibit should be filed as an attachment to the motion. If the Board grants the motion, the replacement exhibit will be entered as such, and the original exhibit will be expunged.

In an Order for the Conduct of the Proceedings in Atrium Medical Corp. v. Davol, Inc., [IPR2013-00189], Paper 48 (February 28, 2014), the Board advised the patent owner that each item included as an observation on cross-examination should be precise, preferably no more than one short sentence in the explanation of relevance. Observations on cross-examination are not meant to serve the purpose of an argumentative surreply. The relevance of record portions noted, relative to the observed cross-examination testimony, should “jump-out” upon notice. If more than one or two sentences are required to explain such relevance, the observations likely is improper.

An observation (or response) is not an opportunity to raise new issues, to re-argue issues, or to pursue objections. Each observation should be in the following form:

In exhibit __, on page __, lines __, the witness testified __. This testimony is relevant to the __ on page __ of __. The testimony is relevant because __.

The entire observation should not exceed one short paragraph. The Board may decline consideration or entry of excessively long or argumentative observations (or responses). A rule of reason applies to so called “combined” observations of more than one item.

A party seeking to file supplemental evidence under 37 C.F.R. § 42.64(b)(2) must receive Board authorization to file such evidence, because the rule contemplates serving such evidence, but not filing such evidence. Likewise, a party seeking to file supplemental information under 37 C.F.R. § 42.123, must receive Board authorization to do so.  See, Facebook, Inc, v. Software Rights Archive, LLC, [IPR2013-00478], Paper 26, (March 3, 2014).

Objections to evidence must be served, but not filed. 37 C.F.R. § 42.64(b)(1).  Objections that are filed will be expunged.  See, Facebook, Inc, v. Software Rights Archive, LLC, [IPR2013-00478], Paper 26, (March 3, 2014).

In Medtroinc. Inc., v NuVasive, Inc., [IPR2014-00075], Paper 10 (February 28, 2014), Medtronic wanted to submit a corrected certificate for the translation of Exhibit 1002, but the NuVasive opposed arguing the that corrected certificate was supplemental infomration that could only be submitted after trial had been declared.  The Board considered the corrected certificate, which merely added the perjury warning, would amount to the correction of a clerical error under 37 C.F.R. § 42.104(c), not the filing of supplemental information under 37 C.F.R. § 42.123(a).