On May 24, 2013, BSP Software LLC filed IPR2013-00307 on U.S. Patent No. 8285678 on Continuous Integration of Business Intelligence Software; Ariosa Diagnostics, Inc. filed IPR2013-00308 on U.S. Patent No. 8296076 on Noninvasive Diagnosis of Fetal Aneuoploidy by Sequencing; and Hewlett-Packard Company filed IPR2013-00309 on U.S. Patent No. 6771381 on Distributed Computer Architecture and Process for Virtual Copying.
Category Archives: Inter Partes Review
May 23, 2013, Four New IPR’s Filed
On May 23, 2013, Ricoh Americas Corporation filed IPR2013-00302 on U.S. Patent No. 7986426 on Distributed Computer Architecture and Process for Document Management; Oracle Corporation Clouding IP, LLC filed IPR2013-00304 on U.S. Patent No. 5944839 System and Method for Automatically Maintaining a Computer System; Gatekeeper Systems, Inc. filed IPR2013-00305 on U.S. Patent No. 7389836 Power-Assisted Cart Retriever with Attenuated Power Output 10947831; and Clearwire Corporation filed IPR2013-00306 on U.S. Patent No. 5590403 on Method and System for Efficiently Providing Two Way Communication between a Central Network and Mobile Unit.
April 24, 2013, One New IPR filed
On April 24, 2013, Ikaria, Inc., filed IPR2013-00253 on U.S. Patent No. 8083997, and InvenSense, Inc., filed IPR2013-00254 on U.S. Patent No. 6,034,419 on Semiconductor Device wtih a Tungsten Contact.
U.S. Patent No, 6,034,419
Inter Partes Review is Thriving; Covered Business Method Review Not so Much
In roughtly the first six months since the AIA created Inter Partes Review, 189 petitions for Inter Partes Review have been filed:
In contrast only a handfull (17) of covered business method reviews have been filed:
February 1, 2013, Two New IPRs Filed
On February 1, 2013, Dynamic Drinkware LLC filed IPR2013-00131 on U.S. Patent No. 6,635,196 on Molded Articles Having a Surface Bearing a Lenticular Image. Shaw Industries Group, Inc. filed IPR 2013-00132 on U.S. Patent No. 7,806,360 on Creel Magazine Supply System and Method.
Another Unsuccessful Request for Rehearing
In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 28 (January 29, 2013), the PTAB denied Nissan’s request for a rehearing related to the PTAB’s Order (Paper 24) regarding ex parte contacts. The Board rejected Nissan’s arguments that it was acting on PTAB’s advice, noting that Nissan did not in fact follow the alleged advice. The PTAB further noted that an ex parte contact cannot be made proper simply by requesting a conference call somewhere within the communication. Finally the PTAB rejected the argument that the patent owner likewise acted impropertly, first noting that that did not change the fact that Nissan acted improperly, and that the patent owner’s communications were different in nature.
January 29, 2013, Three New IPRs Filed
On January 29, 2013, Intelligent Bio-Systems, Inc., filed IPR2013-00128 on U.S. Patent No. 7,057,026 on Labelled Nucleotides. Komatsu America Corp. filed IPR2013-00129 and IPR2013-00130 against U.S. Patent No. 7,039,507 on Apparatus for Tracking and Recording Vital Signs and Task-Related Information of a Vehicle to Identiy Operating Patterns. This is another instance where a Petition felt it needed two separate filing against a single patent to get the job done.
In Search of the Real Party in Interest
In Intellectual Ventures Management LLC v Xilinx, Inc., IPR2012-000018, Paper 12 (January 24, 2013) the PTAB rejected Xilinx argument that Inter Partes Reviews should not be declared in IPR2012-00018 (Patent 7,566,960), IPR2012-00019 (Patent 8,062,968), IPR2012-00020 (Patent 8,058,897), and IPR2012-00023 (Patent 7,994,609), finding that Xilinx has failed to sufficiently demonstrate that IVM has not named all real parties in interest for any of the four proceedings.
PTAB Holds First Pretrial Conference
On January 22, 2012, the PTAB held the very first Pretrial Conference in an IPR in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026. The next day, the PTAB issued an order Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 22 (January 23, 2013), summarizing the matters discussed, which included:
- The Petitioner’s submission of evidence in response to objection by the patent owner (which was premature and will be expunged).
- The Scheduling, which may be changed if the proceedign in joined with a subsequently filed Petition
- The Protective Order
- Additional Discovery
- Motions
- Petitioner’s request for reconsideration
- Settlement
- Other Matters, including co-pending litigation, oral arguments, and the availability of Petitioner’s Expert.
The PTAB Actively Polices Improper Ex Parte Contacts
In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 24 (January 22, 2013), the PTAB rebuked Nissan for an ex parte email that it send to a Judge asking to “know the proper procedure for requesting judicial notice of [a] false statement.” The email included substantive arguments regarding the patent owner’s preliminary response. In addition to admonishing Nissan, the PTAB allowed the patent owner the chance to responde to the email.
PRACTICE TIP: Do not make ex parte conctacts with the PTAB except to set up a conference call, and do not include substantive infomrtion or argument in such a request.