In Mitsubishi Plastics, Inc. v.  Celgard, LLC, IPR2014-00524, Paper 17, )October 15, 2014), the Board gave a refresher course on objecting to evidence supporting a Petition.  The Board explained:

Following institution of an inter partes review trial, “[a]ny objection to evidence submitted during a preliminary proceeding must be served within ten business days of the institution of the trial.” 37 C.F.R. § 42.64(b)(1) (emphasis added).

The Board further explained that:

37 C.F.R. § 42.64(b)(2) provides that “[t]he party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.” (emphasis added).

The Board’s Rules do not require the parties to file objections to evidence with the Board. SIPNet EU SRO v. Straight Path IP Group, Inc., IPR2013-00246, Paper 28 at 3 (December 12, 2013). The Board said that objections, and any supplemental evidence served in response, are only to be filed with the Board in the event they later become the basis of a Motion to Exclude Evidence. Sealed Air Corp. v. Pregis Innovative Packaging, Inc., IPR2013-00554, Paper 18 at 2–3 (April 1, 2014).

Institution Decisions

In Seagate Technology (US) Holdings, Inc. v. Enova Technology Corp., IPR2014-00683, Paper 10, (October 2, 2014), the Board instituted inter partes review of claims 1–15 of U.S. Patent No. 7,136,995.

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00845, Paper 13, (October 2, 2014), the Board instituted inter partes review of claims 20, 21, 34–36, 38, 39, 47, and 49 of U.S. Patent No.7,147,759 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00850, Paper 11, (October 2, 2014), the Board instituted inter partes review of claims 22–33, 37, 46, 48, and 50 of U.S. Patent No. 7,147,759 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00855, Paper 11, (October 2, 2014), the Board instituted inter partes review of claims 1–5 and 11–15 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 12, (October 2, 2014), the Board instituted inter partes review of 6–10 and 16–20 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Samsung Electronics Co., Ltd. v.  Arendi S.A.R.L., IPR2014-001142, Paper 11 (October 2, 2014), the Board denied inter partes review as barred under 35 USC 315(b), and denied joinder with a prior filed IPR would would have eliminated the 315(b) bar.

Final Written Decisions

In Moore Rod & Pipe, LLC v. Wagon Trail Ventures, Inc., IPR2013-00418, Paper 38 (October 2, 2014), the Board issued a Final Written Decision that claims 1-20 of U.S. Patent No. RE36,362 are unpatentable.

In B/E Aerospace, Inc. v. MAG Aerospace Industries, LLC, IPR2014-01510, Paper 3, IPR2014-01511, Paper 3, IPR2014-01513, Paper 3, (October 2, 2014), the Board granted the Petition a filing date, but noted the improper usages of claim charts, and give the petitioner five days to make corrections.  In particular, the Board noted phrases such as “It would be obvious…” and “alternatively have been obvious…” as improperly drifting into argument.

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 13 (October 2, 2014), the Board granted Fujitsu’s motion to join the proceeding with prior IPR2014-00803.

The Board noted that the Leahy-Smith America Invents Act permits joinder of like review proceedings, and said that acting on behalf of the Director, it has the discretion to join an inter partes review with another inter partes review, citing. 35 U.S.C. § 315.  The Board said that joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its discretion, the Board is mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The Board considers the impact of both substantive issues and procedural matters on the proceedings.

The moving party bears the burden to show that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In the instant case, Fujitsu argued that joinder was appropriate because: (1) it is the most expedient way to secure the just, speedy, and inexpensive resolution of the related proceedings; (2) The petition are substantively identical; (3) Fujitsu agreed to consolidate filings and discovery; (4) joinder would not affect the schedule; (5) joinder would streamline the proceedings, reduce the costs and burdens on the parties, and increase efficiencies for the Board without any prejudice to patent owner.

In Samsung Electronics Co., Ltd. v. Arendi S.A.R.L., IPR2014-01142, Paper 11 (October 2, 2014), decided the same day the Board denied joinder which would have saved the Petition from being barred under 35 USC 315(b), noting:

• Petitioner did not specify the differences between its petition and the prior petition.
• Petitioner did not indicate what it meant by “substantially” identical claim charts.
• Petitioner added testimony from a new witness, introducing arguments that are not present in the prior petition.
• Petitioner does not suggest any specific changes to the schedule in the prior proceeding, simply alleging “there appears to be no discernable impact on the trial schedule.”
•  Petitioner did not set forth how briefing and discovery may be simplified, other than suggesting that it have seven additional pages for papers filed.
• Petitioner submitted no evidence that the other petitioner has agreed to, or will, “work together” with Petitioner “to manage the questioning at depositions, and presentations at the hearing, to manage within the time normally allotted, and to avoid redundancy.”

The Board concluded that in view of the facts and circumstances of this case, Petitioner, as movant, has not met its burden to show why joinder is appropriate, consistent with the goal of securing the just, speedy, and inexpensive resolution of every proceeding.

New Filings

Nissan North America, Inc., filed IPR2014-01545 challenging U.S. Patent No. 5,629,086, assigned to Sanyo Electric Co., Ltd.

Nissan North America, Inc., filed IPR2014-01546 challenging U.S. Patent No. 6,066,399, assigned to Sanyo Electric Co., Ltd.

Nissan North America, Inc., filed IPR2014-01547 challenging U.S. Patent No. 6,071,103, assigned to Sanyo Electric Co., Ltd.

Institution Decision

In Juniper Networks, Inc. v. Linex Technologies, Inc., IR2014-00595, Paper 19 (September 26, 2014), the Board denied inter partes review of claims 1-29 of U.S. Patent No. 7,167,503 because the challenged claims of the ’503 patent had been amended in a completed ex parte reexamination proceeding.

In Juniper Networks, Inc. v. Linex Technologies, Inc., IR2014-00596, Paper 25 (September 26, 2014), the Board denied inter partes review of claims 4–37 of U.S. Patent No. 6,493,377 because the challenged claims of the ’377 patent had been amended in a completed ex parte reexamination proceeding.

In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00663, Paper 8 (September 26, 2014), the Board instituted inter partes review of claims 1, 3, 5, 11–15, 22, 24–27, and 34–37 of U.S. Patent No. 7,775,602.

New Filings

Toledo & Co., Inc., filed IPR2014-01542 challenging U.S. Patent No. 7,516,843, assigned to Master Lock Company, LLC.

Institution Decisions

Stat LLC v. Hockeyline Inc., IPR2014-00510, Paper 12 (September 25, 2014), the Board instituted inter partes review of claims 1, 2, 8, 10-12, and 30 of U.S. Patent No. 6,725,107.

In Target Corporation v. Destination Maternity, IPR2014-00509, Paper 19 (September 25, 2014), the Board denied the petition as barred under 35 USC 315(b),finding that Target could not “join” its late filed petition with its prior, timely filed petitions.  The Board found that joinder only allows parties to join, and a party cannot join a proceeding to which it is already a party.

In eBay Inc. v. Advanced Auctions, LLC, IPR2014-00806, Paper 14, the Board denied institution of inter partes review of claims 1-7, 10-15, 17-21, and 23-26 of U.S. Patent No. 8,266,000 as barred under 35 USC 315(b), the Board finding that even though the first suit was dismissed without prejudice, the parties agreed that it would continue in the second suit.

Dispositions

In Handi Quilter, Inc. v. Bernina International AG, IPR2013-00363, Paper 39 (September 25, 2014), the Board held that claims 1, 2, 5–7, 10, 12, 13, 17–21, 23–29, 31, 33, and 34 of U.S. Patent No. 6,883,446 were unpatentable, but not challenged claims 3, 4, 8, 9, 11, 14-16, 22, 30, and 32.

In Becton, Dickinson & Company v. One StockDuq Holdings, LLC, IPR2013-00235, Paper 30 (September 25, 2014), the Board held that claims 22–26, 28, 29, and 31 (all of the challenged claims) of U.S. Patent No. 5,704,914, were unpatentable.