Often times the best lessons are those learned at someone else’s expense. One such case is Valeo, Inc.v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014).  The Patent Owner urged the Board to exercise its discretion not to institute inter partes review on a patent already being challenged arguing that the Board has held consistently that a petitioner must explain adequately why a follow-on petition is not redundant.  The Board rejected this argument, instructing the patent owner that “The citation of a single case does not demonstrate what the Board has consistently held.” The Board went on to consider the merits of the Petition, and it was petitioner’s opportunity to be schooled.  The Board found petitioner’s obviousness arguments deficient in three respects: First, Petitioner’s obviousness analysis is incomplete in that it fails to state explicitly the differences between the primary reference and the claimed subject matter, noting that.Graham v. John Deere Co. requires determining the differences between the claims at issue and the prior art.  Second, the Petition simply quotes portions of the references, and does not explain persuasively the relevance of the evidence.  The Board was looking for some explanation of how the quoted language meets the claim limitation.  Third, and finally, the Board complained that Petition failed to explain how the references are combined to reach the claimed subject matter, The Board criticized that petitioner’s conclusory statements were not substitutes for explanation of how the references would be combined.  The Board declined to institute inter partes review of any of the challenged claims.

Petitions Filed (3)

Sony Computer Entertainment America LLC filed IPR 2015-000396, challenging U.S. Patent No. 7,218,313, assigned to APLIX IP HOLDINGS CORPORATION.

Sony Computer Entertainment America LLC filed IPR 2015-000396, challenging U.S. Patent No. 7,218,313, assigned to APLIX IP HOLDINGS CORPORATION.

LG Display Co., Ltd. filed IPR2015-00487, challenging U.S. Pat. 7,404,660, assigned to Solid State Opto Limited.

Institution Decisions (2)

Valeo, Inc v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014), the Board declined to institute inter partes review of claims claims 1–18 and 20–24 of U.S. Patent No. 7,877,175.

Valeo, Inc v. Magna Electronics Inc., IPR2014-01208, Paper 13 (December 23, 2014), the Board instituted inter partes review of claims 2, 3, 5, 7, 11, 12, 18, 19, 21–26, 28, 32–35, 37, 40, and 44–46 of U.S. Patent No. 7,991,522, but not as to challenged claims 4, 16, 17, and 20.

Arris Group, Inc. v. Cirrex Systems, LLC, IPR2014-01077, Paper 6 (December 23, 2014), the Board instituted inter partes review of claims 1 and 2 of U.S. Patent No. 6,208,783.

Dispositions (5)

GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041 (Paper 135); IPR2014-0043 (Paper 114); IPR2014-00051 (Paper 113); IPR2014-00054 (Paper 134); and IPR2014-00055 (Paper 106)(December 24, 2014), the Board terminated the proceedings on the joint motion of the parties.

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419 and IPR2013-00424m Paper 48 (December 12, 2014), the patent owner sought permission from the Board to file a motion to terminate an ex parte reexamination filed by the petitioner, complaining that it gave petitioner as second bite of the apple.  Because the reexamination had not yet been declared, and because nothing in the reexamination could possibly affect the outcome of the inter partes review, the Board denied the request.

IT DOES APPEAR FROM THIS DECISION THAT A LATE-FILED REQUEST FOR REEXAMINATION IS ANOTHER BITE AT THE APPLE FOR THE PETITIONER; HOWEVER IT ALSO MAY BE AN ESCAPE HATCH FOR A PATENT OWNER TO GET NEW CLAIMS THAT WOULD NEVER BE AVAILABLE IN A MOTION TO AMEND.

In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 (November 28, 2014), the Board denied petitioner’s motion to file as supplemental information under 37 C.F.R. § 42.123(a) declarations used in two subsequently filed inter partes reviews by third parties.

The Board found that petitioner met the criteria set forth in §42.123(a), noting that petitioner filed its request for authorization to file a Motion to Submit Supplemental Evidence within one month of the date of institution, and the patent owner did not dispute that the declarations are relevant to a claim for which the trial has been instituted.  However, the Board said that meeting §42.123(a) does not mean that the Board will automatically grant that motion, and allow submission of the supplemental information at issue, citing Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, (August 5, 2013); ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00139, (July 30, 2013); Norman Int’l, Inc. v. Andrew J. Tosti Testamentary Trust, Case IPR2014-00283, slip op. at 5 (PTAB Sept. 29, 2014).

The Board has allowed submission of supplemental information where the information was alleged to confirm the public accessibility of originally cited prior art, but did not change the grounds of unpatentability authorized in the proceeding, and did not change the evidence initially presented in the petition to support those grounds. Palo Alto v. Juniper, IPR2013-00369, (February 5, 2014).  However, the Board has denied motions to supplement where the petitioner sought to use the supplemental information to bolster the challenges presented in the petition.  ZTE v. Contentguard Holdings, IPR2013-00139, (July 30, 2013)(denying entry of supplemental information where petitioner submitted information in response to claim construction by Board in institution decision); Redline Detection v. Star Envirotech, IPR2013-00106, (August 5, 2013) (“We do not read 37 C.F.R. § 42.123 as permitting a petitioner to wait for the Board to narrow the grounds submitted in the petition in order to create a more focused declaration at less expense that will bolster its position in the chosen grounds.”).

Denying entry of supplemental information which effectively changes the evidence originally relied upon in a petition is in accord with the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim.   The Board found that admitting the declarations would change the evidence relied upon in the petition, and therefore denied the motion to submit supplemental information.

In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00304, Paper 23, IPR2014-00305, Paper 24 (November 28, 2014), the Board denied petitioner leave to file a motion to strike exhibits from the patent owners response because the exhibits contained attorney argument, and thus were an attempt to avoid the page limit.  Because all of the information in the Exhibit appeared elsewhere in patentees papers, and petitioner timely served objections in accordance with 37 C.F.R. § 42.64(a)(1), preserving petitioner’s ability to file a motion to exclude, the Board saw no reason to allow a motion to strike the exhibit.