In Zerto, Inc. v. EMC Corporation, IPR2014-01295, Paper 10 (November 25, 2014), the Board granted in part patent owner’s motion for additional discovery regarding the real party in interest, one of the few areas where the Board has allowed discovery.
Category Archives: Inter Partes Review
November 25, 2015
Institution Decisions
In Excelsior Medical Corporation v. Becton, Dickinson and Company, IPR2014-00880, Paper 12 (November 25, 2014), the Board instituted inter partes review of claims 10, 12, and 14 of US Patent No. 8,740,864 (but not as to challenged claims 11 and 13.
Disposition
In Sequenom, Inc, v, The Board of Trustees of The Leland Stanford Junior University, IPR2-12-00390, Paper 45 (November 25, 2014), the Board issued a Final Written Decision that claims 1–17 of U.S. Patent No. 8,195,415 were not unpatentable.
November 24, 2014
New Filings
Pfizer, Inc. filed IPR2015-00293 challenging U.S. Patent No. 8,173,127, assigned to Intellect/Neurosciences, Inc.
World Bottling Cap, LLC filed IPR2015-00296 challenging U.S. Patent No. 8,550,271, assigned to Deutsche Bank AG.
Institution Decisions
In Yamaha Corporation of America v. Black Hills Media, LLC, IPR2014-00766, Paper 7 (November 24, 2014), the Board instituted inter partes review of claims 4, 5, 33, and 34 of U.S. Patent No. 8,214,873 (all of the challenged claims).
In Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746, Paper 22 (November 24, 2014), the Board instituted inter partes review of claim 14 of U.S. Patent No. 5,563,883 (but not challenged claims 1, 3, and 4).
In CareCloud Corporation v. athenahealth, Inc., CBM2014-00143, Paper 7, (November 24, 2014), the Board instituted covered business method review of claims 1-20 of U.S. Patent No. 7,617,116.
Dispositions
In Accord Healthcare, Inc. v. Helsinn Healthcare S.A., IPR2014-00010, Paper 10 (November 24, 2014), the Board terminated the inter partes review on the joint motion of the parties.
In Callidus Software, Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 50, CBM2013-00053, Paper 46, CBM2013-00054, CBM2014-00117, CBM2014-00118 (November 24, 2014), the Board terminated the covered business method review on the joint motion of the parties, affecting U.S. Patent Nos. 7,904,326, 7,958,024, 7,908,304, 7,908,304, and 7,958,024.
November 21, 2014
New Filings
Microboards Technology, LLC filed IPR2015-00284 challenging U.S. Patent No. 5,866,058 assigned to Stratasys Inc.
Artsana USA, Inc., filed IPR2015-00286 challenging U.S. Patent No. 8,764,612 assigned to Kolcraft Enterprises, Inc.
Microboards Technology, LLC filed IPR2015-00287 challenging U.S. Patent No. 6,004,124 assigned to Stratasys Inc.
Microboards Technology, LLC filed IPR2015-00288 challenging U.S. Patent No. 8,349,239 assigned to Stratasys Inc.
Institution Decisions
In Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00757, Paper 8, (November 21, 2014), the Board instituted inter partes review of claims 1–20 of U.S. Patent No. 8,300,285 (all of the challenged claims).
Dispositions
Corning Optical Communications RF v. PPC Broadband, Inc., IPR2014-00346 (November 21, 2014), the Board issued a Final Written Decision that claims 1–8, 10–16, and 18–31 of U.S. Patent No. 8,287,320 are unpatentable.
Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00342, Paper 49 (November 21, 2014), the Board issued a Final Written Decision that claims 10–25 of U.S. Patent No. 8,323,060 are unpatentable.
November 20, 2014
New Filings
Zetec, Inc. filed IPR2015-00280 challenging U.S. Patent No. 6,823,269, assigned to Westinghouse Electric Co LLC.
Google Inc. filed IPR2015-00283 challenging U.S. Patent No. 6,038,295 assigned to TLI Communications LLC.
Institution Decisions
In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00768, Paper 11, (November 20, 2014), the Board instituted inter partes review of claims 9, 10, 13–15, and 27–42 of U.S. Patent No. 7,975,726 (but not as to challenged claims 1–8, 11, 12, and 16–26).
In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00770, Paper 13, (November 20, 2014), the Board instituted inter partes review of claims 1 and 5–37 of U.S. Patent No. 8,667,991, (but not as to challenged claims 2, 3, and 4).
In BLD Services, LLC v. LMK TECHNOLOGIES, LLC, IPR2014-00772, Paper 13, (November 20, 2014), the Board instituted inter partes review of claims 1–16 (all of the challenged claims) of U.S. Patent No. 8,667,992.
The Gillette Co., v. Zond, LLC, IPR2014-01020, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 16, 28, 41, 42, 45, and 46 of U.S. Patent No. 6,805,779 (all of the challenge claims).
In The Gillette Co., v. Zond, LLC, IPR2014-01022, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 30–37, 39, and 40 of U.S. Patent No. 6,805,779 (all of the challenge claims).
In The Gillette Co., v. Zond, LLC, IPR2014-01025, Paper 12, (November 20, 2014), the Board instituted inter partes review of claims 7, 9, 20, 21, 38, and 44 of U.S. Patent No. 6,805,779 (all of the challenge claims).
In Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00757, Paper 8 (November 21, 2014) the Board instituted inter partes review of claims 1–20 of U.S. Patent No. 8,300,285.
In Canon Inc. v. Intellectual Ventures I LLC, IPR2014-00952, Paper 8 (November 21, 2014) the Board denied inter partes review of claims 1–20 of U.S. Patent No. 8,300,285.
In Ford Motor Company v. Paice LLC, IPR2014-00852, Paper 11, the Board denied inter partes review of claims 1–3, 5, 6, 19, 27, 40, and 58 of U.S. Patent No. 7,455,134.
Dispositions
In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00340, Paper 77 (November 21, 2014), the Board issued a Final Written Decision that claims 1–9 of U.S. Patent No. 8,323,060 are unpatentable.
In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00345, Paper 76 (November 21, 2014), the Board issued a Final Written Decision that claims 7–27 of U.S. Patent No. 8,313,353 are unpatentable.
In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2013-00347, Paper 79 (November 21, 2014), the Board issued a Final Written Decision that claims 9, 17, and 32 of U.S. Patent No. 8,287,320 are unpatentable.
In Dell, Inc. v. Selene Communication Technologies, LLC, IPR2014-01411, Paper 21 (November 21, 2014) the Board terminated the proceeding on the joint Motion of the Parties.
Additional Discovery Denied for Failure to Meet Garmin Factors
Seoul Semiconductor Co., Ltd v. Enplas Corporation, IPR2014-00605, Paper 17, (November 5, 2014), the Board denied patent owners motion for additional discovery which exceeded the scope of the Board’s authorization. The Board further warned the parties that future violation of our prohibition against unauthorized motions shall be subject to sanctions.
As to the discovery that the Board did authorize, the Board found patent owner’s application of the Garmin Factors deficient. The Board found that the Patent Owner failed to meet the first factor by filing tow show beyond speculation that something useful will be discovered. The Board further found that patent owner was asking for information that it could reasonable figure or assemble on its own in violation of the third factor. Lastly the Board found that the requests were not sensibly and responsibly tailored to a genuine need as required by the fifth Garmin factor.
Rare Grant of Additional Discovery to Identify
In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488, Paper 25 (November 5, 2014) the Board granted patent owner’s motion for additional discovery to determine the real party in interest.
November 4, 2014
Institution Decisions
In Brainlab AG v. Sarif Biomedical LLC, IPR2014-00753, Paper 10 (October 4, 2014), the Board instituted inter partes review of claims 10–11 of U.S. Patent No. 5,755,725 (but not as to challenged claims 1-9.
In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00723, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of U.S. Patent No. 8,214,873.
In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00711, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 10–12 of U.S. Patent No.8,230,099 (but not challenged claim 1).
In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00709, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1–5, 10, 11, 13, 14, and 16–18 of U.S. Patent No. 8,028,323.
.In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00740, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1–3, 9–11 and 14 of U.S. Patent No. 8,045,952 (but not challenged claims 4 and 12).
.Dispositions
In Taiwan Semiconductor Manufacturing Company, Ltd. v. Ziptronix, Inc., Paper 19 (November 4, 2014), the Board granted patent owner’s request for adverse judgment for under 37 C.F.R. § 42.73(b) with respect to claims 1-14 and 53-60 of U.S. Patent No. 6,563,133.
In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00362, Paper 41 (November 4, 2014), the Board issued a Final Written Decision that claims 1–3, 8–12, 16–20, 23–26, and 29–33 (all of the challenged claims) of U.S. Patent No. 7,348,575 were unpatentable.
In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00363, Paper 34 (November 4, 2014), the Board issued a Final Written Decision that claims 55–67 (all of the challenged claims) of U.S. Patent No. 7,348,575 were unpatentable.
Rehearing Decisions
Iron Dome LLC v. Chinook Licensing DE, LLC, IPR2014-00514, Paper 12 (November 4, 2014) the Board denied petitioner’s request for rehearing of the decision not to institute inter partes review.
October 31, 2014
New Filings
Nestle USA, Ind., filed IPR2015-00195 challenging U.S. Pat. 6,475,435 assigned to Stork Food & Dairy Systems, B.V.TORK FOOD & DAIRY SYSTEMS B.V.
LG Electronics, Inc. filed IPR2015-00196 challenging U.S. Patent 6,131,121 assigned to Straight Path IP Group, Inc.
Shinn Fu Company of America, Inc. filed IPR2015-000199 challenging U.S. Patent No. 6,604,610 assigned to the Tire Hanger Corporation.
October 30, 2014
New Filings
Apple, Inc., filed IPR2015-00185, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.
Apple, Inc., filed IPR2015-00186, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.
Apple, Inc., filed IPR2015-00187, challenging U.S. Patent No. 7,490,151, assigned to Virtnex, Inc.
Apple, Inc., filed IPR2015-00188, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.
Apple, Inc., filed IPR2015-00189, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.
Institution Decisions
In Google Inc. v. Personalweb Technologies, LLC, IPR2014-00977, Paper 11, IPR2014-00978, Paper 11, IPR2014-00979, Paper 10, IPR2014-00980, Paper 10 (October 30, 2014) the Board denied Google’s motion to join a previously instituted inter partes review because Google did not file its motion for joinder within one month after it instituted an inter partes review in the earlier proceeding, as required by 37 C.F.R. § 42.122(b).
In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00124, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.
In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00125, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.
Dispositions
In Netflix, Inc. v. Straight Path IP Group, Inc., IPR2014-01241 (October 30, 2014), the Board granted the parties joint motion to terminate.
In Vonage Holdings Corporation, et al., v. Straight Path IP Group, Inc., IPR2014-01223, IPR2014-01224, IPR2014-01225, IPR2014-01234, IPR2014-01241(October 30, 2014), the Board granted the parties’ joint motion to terminate.
In Novelty, Inc. v. Magna-Mug LLC, IPR2014-01171, Paper 17 (October 30, 2014), the Board granted the parties’ joint motion to terminate.
Decisions on Rehearing
In Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper 39, IPR2013-00590, Paper 40 (October 30, 2014) the Board denied rehearing of its decision that Petitioner’s Reply evidence, would not be considered by the Board in rendering a final written decision.
In Safeway, Inc., v. Kroy IP Holdings, LLC, IPR2014-00685, Paper 13, the Board denied rehearing of its decision not to institute inter partes review of claims claims 1 and 19–25 of US Patent No. 7,054,830.