New Filings

Google Inc. filed IPR2015-00179 challenging U.S. Patent No. 8,572,279, assigned to Ex Machina, Inc.

Google Inc. filed IPR2015-00180 challenging U.S. Patent No. 8,601,154, assigned to Ex Machina, Inc.

Nest Labs, Inc. filed IPR2015-00181 challenging U.S. Patent No. 8,571,518, assigned to Allure Energy, Inc.

VSR Industries, Inc. filed UPR2015-00181 challenging U.S. Patent No. 6,860,814 assigned to Cole Kepro International LLC.

Institution Decisions

In Phigenix, Inc. v. ImmunoGen, Inc., IPR2014-00676, Paper 11 (October 29, 2014), the Board instituted inter partes review of claims 1-8 (all of the challenged claims) of U.S. Patent No. 8,337,856.

In C&D Zodiac, Inc. v. BE Intellectual Property, Inc., IPR2014-00727, Paper 15 (October 29, 2014), the Board instituted inter partes review of claims 1, 3–10, 12–14, 16–22, 24–31, and 33–38 (all the challenged claims) of U.S. Patent No. 8,590,838.

In DealerSocket, Inc. v.  AutoAlert, LLC, CBM2014-00132, Paper 11, The Board instituted covered business method review of claims 1, 3–5, 7, 9–11, and 15 of U.S. Patent No. 8,095,461

Decisions on Rehearing

In McClinton Energy Group L.L.C. v. Magnum Oil Tools International, Ltd., IPR2013-00231, Paper 33 (October 29, 2014) the Board denied patent owner’s request for a rehearing on the grounds that the Final Written Decision relied upon grounds not set forth in the Petition.

For all of its complexities, the inter partes review system can be fairly fault tolerant.  In Debasish Mukhopadhyay v. Veolia Water Solutions & Technology Support, IPR2014-01563, Paper 4 (October 28, 2014), the Board granted the petition a filing date, despite some glaring errors:

1. Failure to serve petition and all exhibits on the Patent Owner via Express Mail® or by means at least as fast and reliable as Express Mail®. Service may be made electronically upon agreement of the parties. 37 C.F.R. §§ 42.6(e), 42.105.
2. Incorrect spacing. 37 C.F.R. § 42.6 requires the petition to be double-spaced, with the exception of claim charts. Block quotations may be 1.5 spaced, but must be indented from both the left and right margins. The footnotes at pages 9–10 must be reformatted.
3. Failure to provide in a claim construction section a statement identifying how disputed or important claim terms are to be construed. See 37 C.F.R. § 42.104(b)(3).
4. Claim charts should be included in the petition. The rules require that the petition specify where each element of a challenged claim is to be found in the prior art. See 37 C.F.R. § 42.104(b)(4). This information is to be provided pursuant to the page limit and double-spacing requirements. The element-by-element showing may be provided in a claim chart, which counts towards the page limit, but may be single-spaced. See 37 C.F.R. § 42.6(a)(2)(iii). As it circumvents the double-spacing requirement, claim charts may not contain any arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. Submitting the claim chart as an exhibit appears to circumvent the page limit set forth in 37 C.F.R. § 42.24.

While Petitioner will be very busy in the next five business days making the necessary corrections, the Petition goes forward.

Institution Decisions

In Unverferth Manufacturing Co., Inc. v. J. & M. Manufacturing Co., Inc., IPR2014-00758, Paper 7 (October 28, 2014), the Board instituted inter partes review of claims 1–14 (all of the challenged claims)of Patent No. US 8,585,343.

In Parrot S.A. v. Drone Technologies, Inc., IPR2014-00732, Paper 8 (October 27, 2014), the Board instituted inter partes review of  claims 1–12 of U.S. Patent No. 8,106,748.

Dispositions

In Oracle Corporation v. Click-to-Call Technologies, Inc., IPR2013-00312, Paper 52 (October 29, 2014), the Board issued a Final Written Opinion that claims 1, 2, 8, 12, 13, 15, 16, 18, 19, 22–24, and 26–30 (all the claims in the proceeding) of U.S. Patent No. 5,818,836 were unpatentable.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00066, Paper 30 (October 28, 2014), the Board granted the parties’ joint motion to terminate.

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00266, Paper 73 (October 28, 2014), the Board disposed of the inter partes review by granting the patent owners motion to cancel claims 1, 2, 4, 11, 12, 17, 18, and 19 of U.S. Patent No. 8,158,346 (all of the challenged claims), but denying the patent owners motion to substitute new claims 20-26.

New Filings

Agila Specialties Inc., filed IPR2015-00144, challenging U.S. Patent No. 8, 058,238 owned by the Royal Bank of Canada.

Institution Decisions

In McWane, Inc. v. Waugh, IPR2014-00777, Paper 8 (October 24, 2014) the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 8,567,155.

Institution Decision

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In The Gillette Company v. Zond LLC, IPR2014-00991, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25, 27–30, 33, 34, 38, 39, 42, 43, and 46–48 (all of the challenged claims) of U.S. Patent No. 7,811,421 B2 (“the ’421 patent”).

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 9, 14, 21, 26, 35, and 37 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00890, Paper 10 (October 24, 2014). the Board instituted inter partes review of claims 1, 2, and 4–17 of US Patent No. 7,265,792, but not claims 3, 26, and 27.

Termination

In RPC Formatec GmbH v. Trudell Medical International, IPR2014-01040, Paper 10 (October 24, 2014), the Board terminated the proceeding before institution on the joint motion of the parties.

Joinder

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00805.

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00800.

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00802.

Rehearing Decisions

In Samsung Electronics v Rembrandt Wireless Technologies, LP, IPR2014-00514, Paper 20, IPR2014-00515, Paper 20  (October 24, 2014) the Board denied rehearing of its decision not to institute inter partes review of U.S. Patent No. 8,023,580.

In Conopco, Inc, v, The Procter & Gamble Co., IPR2014-00628, Paper 21 (October 21, 2014) the Board denied inter partes review of claims 1–23 (all of the challenged claims) of U.S. Patent No. 6,649,155.  The Board noted that it has discretion to decline to institute an inter partes review (35 U.S.C. § 314(a)), and that one factor it may take into account when exercising that discretion is whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. 325(d).  The Board compared the prior art and arguments raised in the instant petition to those raised in Conopco’s prior inter partes review petition, and determined that the petition raises “substantially the same . . . arguments” that “previously were presented to the Office” in the prior petition.  This was one of several circumstances that informed the Board’s decision to decline to institute review.

Institution Decisions

In First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, IPR2014-00715, Paper 9, IPR2014-00720, Paper 8 (October 17, 2014), the Board denied inter partes review as barred under 35 U.S.C. § 315(b), and for failure to name the real party in interest as required by 35 U.S.C. § 312(a).

In Ubisoft Entertainment SA v. Princeton Digital Image Corporation, IPR2014-00635, Paper 9 (October 17, 2014), the Board instituted inter partes review of claims 1–13, 15–18, and 21–23 of U.S. Patent No. 5,513,129 (but not as to challenged claims 14, 19, and 20).

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 1–11 and 33 (“the challenged claims”) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 12 and 13 (all of challenged claims) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00648, Paper 14 (October 17, 2014), the Board instituted inter partes review of 1, 2, and 5–8 (all of the challenged claims) of U.S. Patent No. 8,217,612.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00650, Paper 14 (October 17, 2014), the Board instituted inter partes review of claims 1, 6–9, 11, 15, and 16 of U.S. Patent No. 7,579,802.

Joinder Decisions

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 13 (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with Taiwan Semiconductor Manuf. Co. v. Zond, LLC., IPR2014-00807.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01100.

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01099.

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