Category Archives: Inter Partes Review

Make That First Bite A Big One — Don’t Count on a Second Petition

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In Medtronic, Inc. v.  Marital Deduction Trust, IPR2014-00695, Paper 18 (September 25, 2014), the Board denied Medtronic’s motion to join the IPR with a prior IPR 2014-00100, also involving U.S. Patent No. 5,593,417.  The Board noted that joinder was essential because this second IPR was filed more than one year after Medtronic had been served with a complaint for infringement of the ‘417 patent.

The Board said it was not persuaded that Medtronic had shown that joinder is justified in this instance. The Board said that the second petition represents a “second bite at the apple” for Medtronic, who had received the benefit of seeing the Decision to Institute in the prior case involving the same parties and patent claims.  The Board said that this “second bite at the apple” situation is particularly noteworthy in view of the § 315(b) bar at issue here, as well as a difference of opinion that currently exists at the Board as to whether the Board has discretion under 35 U.S.C. § 315(c) to allow joinder of a person to an ongoing inter partes review when that person is already a party to the ongoing inter partes review.

The “controversy” to which the Board referred, it cited its decision in Target Corp. v. Destination Maternity Corp., IPR2014-00508, (September 25, 2014) (Paper 18), where a panel construed the statute as permitting joinder of parties, not joinder of two proceedings by the same party, while in Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, (September 2, 2014) (Paper 166), a panel concluded that joinder of proceedings by the same party was appropriate.

The Board noted that to the extent that Medtronic was in a difficult position, it was of its own making, since it delayed filing the second petition.

 

 

 

September 24, 2014

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Institution Decisions

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 13 (September 24, 2014), the Board instituted inter partes review of claim 1 (the only claim) of U.S. Patent No. 6,826,694.

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Tela Innovations. Inc., IPR2014-00094, the Board granted the joint motion of the parties to terminate the proceeding.

In EBAY Inc.v. Moneycat Ltd., CBM2014-00091, Paper 12 (September 24, 2014), the Board instituted a covered business method review of claims 1, 2, 4–8, 10, and 11 of U.S. Patent No. 8,051,011 (all of the challenged claims).

In EBAY Inc.v. Moneycat Ltd., CBM2014-00092, Paper 12 (September 24, 2014), the Board instituted a covered business method review of claims 1, 2, and 4–11 of U.S. Patent No. 7,590,602 (all of the challenged claims).

In EBAY Inc.v. Moneycat Ltd., CBM2014-00093, Paper 14 (September 24, 2014), the Board instituted a covered business method review of claims 1–3, 5–11, and 13–23 of U.S. Patent No. 8,195,578 (but not as to challenged claims 4 and 12).

Dispositions

In Pentair Ltd. v. Hayward Industries, Inc., IPR2014-00187, Paper 21 (September 24, 2014), the Board entered final decision on the patent owner motion that claims 1, 2, and 9 of U.S. Patent No. 8,281,425 were unpatentable.

 

 

Clerical Errors Forgiven

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In SCHOTT Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 30 (September 22, 2014), the Board forgave a clerical error that resulted in the petitioner’s expert declaration not being filed until January 21, and accorded the Petition a filing date of January 18, when the rest of Petitioner’s papers were filed.  The Board was satisfied that the delay was the result of a clerical error, and noted that similar clerical errors had been forgiven in the past, citing Conmed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624 (February 21, 2014) (Paper 18); Syntroleum Corp. v. Neste Oil Oyj, IPR2013-00178 (July 22, 2013) (Paper 21); ABB Inc. v. Roy-G-Biv Corp., IPR2013-00063, (January 16, 2013) (Paper 21).

September 22, 2014

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New Filings

CB Distributors, Inc., filed IPR2014-01529 challenging U.S. Patent No. 8,689,805 assigned to Fontem Holdings 1 B.V.

Dispositions

In Sony Corporation v. Yissum Research Development Company of the Hebrew University of Jerusalem, IPR2013-00219, Paper 60 (September 22, 2014), the Board held that claims 1–4, 7, 10, 20, 27–29, and 36–38 (all of the challenged claims) of U.S. Patent No. 7,477,284 were unpatentable.

 

September 12, 2014

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Institution Decisions

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00736, Paper 10 (September 12, 2014), the Board instituted inter partes review of claims 1–7 of U.S. Patent No. 6,676,446.

In Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779, Paper 6 (September 12, 2014), the Board denied inter partes review of U.S. Patent No. 6,258,044  as barred under 35 USC 315(b).

Dispositions

In Apex Medical Corp. v. ResMed Limited, IPR2014-00551, Paper 11 (September 12, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Dynamic Drinkware LLC, v, National Graphics, Inc., IPR2013-00131, Paper 42 (September 12, 2014), the Board  found that Petitioner has failed to prove by a preponderance of the evidence that claims 1 and 12 of U.S. Patent No. 6,635,196 (the only claims at issue) are unpatentable.

In Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00554, IPR2013-00555, IPR2013-00556, IPR2013-00557, and IPR2013-00558, (September 12, 2014) the Board terminated the inter partes reviews on the joint motion of the parties.

Pantech Wireless, Inc. v. Feher, IPR2014-00769, Paper 14 (September 12, 2014), the Board denied inter partes review on the joint motion of the parties.

In Google Inc.v. Inventor Holdings, LLC, CBM2014-00002, Paper 38 (September 12, 2014), the Board entered judgment cancelling claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of U.S. Patent No. 5,844,270, on the patent owner’s motion.

In Google Inc.v. Inventor Holdings, LLC, CBM2014-00003, Paper 34 (September 12, 2014), the Board entered judgment cancelling claims 1 -4, 9-11, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272, on the patent owner’s motion.

In Mohawk Resources Ltd. v. Vehicle Service Group LLC, IPR2014-00464, Paper 15 (September 12, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Apex Medical Corp. v. ResMed Limited, IPR2013-00512, Paper 27 IPR2013-00512, Paper 29,IPR2013-00514 Paper 27IPR2013-00515, Paper 27, IPR2013-00516, Paper 29,(September 12, 2014) the Board terminated the Inter Partes reviews on the joint motion of the parties.

Rehearing Decisions

In Finisar Corp. v. Thomas Swan & Co., Ltd., IPR2014-00460, Paper 12 (September 12, 2014), the Board denied rehearing of the decision not to institute inter partes review of U.S. Patent No. 7,145,710, finding that the patent owner successfully antedated the prior art.

 

September 11, 2014

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Institution Decisions

In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00488, Paper 17 (September 11, 2014), the Board instituted inter partes review of claims 1–9 of U.S. Patent No. 7,769,605 (“all of the challenged claims).

In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00691, Paper 17 (September 11, 2014), the Board instituted inter partes review of claims claims 1–29 of U.S. Patent No. 7,870,249 (“all of the challenged claims).

In Safeway, Inc. v. Kroy IP Holdings, LLC, IPR2014-00685, Paper 11 (September 11, 2014), the Board denied institution of inter partes reviews of claims 1 and 19–25 of U.S. Patent No. 7,054,830 (“all of the challenged claims”).

Dispositions

In PCT International, Inc. v. Amphenol Corporation, IPR2013-00229, Paper 30 (September 11, 2014), the Board found claims 1–13 and 16–18 of U.S. Patent No. 7,544,094 (all of the challenged claims) unpatentable.

Decision on Rehearing

In Schrader International, Inc. v. Wasica Gmbh, IPR2014-00476, Paper 14 (September 11, 2014), the Board denied petitioner’s request for rehearing of the refusal to institute inter partes review of claim 11, the Board having instituted inter partes review of claims 1-10 and 12-21 of U.S. Patent No. 5,602,524.

 

September 5, 2014

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Institution Decisions

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411 , Paper 8 (September 5, 2014), the Board instituted inter partes review of claims 1-58 (all of the claims) of U.S. Patent No. 8,426,813.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00608, Paper 8 (September 5, 2014), the Board denied inter partes review of claims 1-58 (all of the claims) of U.S. Patent No. 8,426,813.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00434 , Paper 8 (September 5, 2014), the Board instituted inter partes review of claims 1-7 and 9-20 of U.S. Patent No. 8,193,496.

FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00608, Paper 8 (September 5, 2014), the Board denied inter partes review of claims 1-7 and 9-20 of U.S. Patent No. 8,193,496.

In Dorman Products, Inc. v. Paccar Inc., IPR2014-00542, Paper 10 (September 5, 2014), the Board denied inter partes review of US Patent No. D525,731.

In ARM, Inc. v. Vantage Point Technology, Inc., IPR2014-00467, Paper 10 (September 10, 2014), the Board denied inter partes review of claims 1 and 8 of U.S. Patent No. 5,463,750.

Rehearing Decisions

In Microsoft Corporation v. VirnetX Inc., IPR2014-00558, Paper 16 (September 5, 2014), the Board denied petitioner’s request for rehearing of the decision to not institute inter partes review of U.S. Patent 7,188,180 because of the one year bar of 35 USC 315(b).

In Microsoft Corporation v. VirnetX Inc., IPR2014-00401, Paper 14 (September 5, 2014), the Board denied petitioner’s request for rehearing of the decision to not institute inter partes review of U.S. Patent 7,188,180 because of the one year bar of 35 USC 315(b).

In Microsoft Corporation v. VirnetX Inc., IPR2014-00405, Paper 14 (September 5, 2014), the Board denied petitioner’s request for rehearing of the decision to not institute inter partes review of U.S. Patent 7,188,180 because of the one year bar of 35 USC 315(b).

 

 

 

 

 

 

No Right to Cross-Examine a Declarant Not Under the Proponent’s Control

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In Mexichem Amanco Holding S.A. de C.V. v.Honeywell International, Inc., IPR2013-00576, Paper 36 (September 5, 2014), the Board denied patent owner’s request for additional discovery — the deposition of Dr. Takashi Shibanuma, who provided previously prepared testimony relied on by Petitioner in its Reply to Patent Owner’s Response.  This previously prepared testimony was a declaration originally submitted in reexaminations of a different, but related, patent.  The Board denied the additional discovery relying on the Fifth Garmin Factor — that the request is not overly burdensome to answer.  The Board said that it wold not compel petitioner to provide Dr. Shibanuma for cross-examination in a deposition, noting that the witness was not under Petitioner’s control, and may reside in Japan, and that such such action may require a court subpoena and/or invoke the Hague Convention.

 

September 4, 2014

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Institution Decisions

In Fiserv, Inc. v. DataTreasury Corporation, CBM2014-00087, Paper 6 (September 4, 2014), the Board instituted a covered business method review of claims 1, 2, 16, 18, 22, 25, 26, 29, 36, 38–42, 45–49, 55, 58–60, 64, 66–70, 73–75, 78, 80, 82–84, 88–91, 102, 105–110, and 114–123 of U.S. Patent No. 5,910,988, but not 3-7, 9-15, 1719-21, 23-24, 27, 30-35, 37, 43-44, 50-54, 56-56, 61-63, 65, 71-72, 76-77, 79, 81, 85-87, 92-101, 103-104, 111-123.

.In Fiserv, Inc. v. DataTreasury Corporation, CBM2014-00088, Paper 6 (September 4, 2014), the Board instituted a covered business method review of  claims 1, 2, 9, 16, 18, 19, 22, 25, 26, 29, 36, 38–43, 48, 50, 51, 54, 55, 60, 62, 63, and 66 of U.S. Patent No. 6,032,137 (but not claims 3-7, 10-15, 17, 18, 19-21, 24, 27, 30-35, 27, 44-47, 49, 52-53, 56-59, 61, 64-65).

In MasterCard International Incorporated v. D’Agostino, IPR2014-00543, Paper 8 (September 4, 2014), the Board instituted inter partes review of claims 1–38 of U.S. Patent No. 8,036,988 (all of the challenged claims).

In MasterCard International Incorporated v. D’Agostino, IPR2014-00544, Paper 7 (September 4, 2014), the Board instituted inter partes review of claims 1–30 of U.S. Patent No. 7,840,486 (all of the challenged claims).

Dispositions

In BMO Harris Bank National Association v. Stambler, CBM2014-00129, Paper (September 4, 2014), the Board terminated the covered business method review on the joint motion of the parties.

In SAP America, Inc. v. Versata Software, Inc., CBM2013-00042, Paper 42 (September 4, 2014), the Board terminated the covered business method review on the joint motion fo the parties.

 

 

 

September 3, 2014

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Institution Decisions

In NeuLion, Inc. v. Cascades Ventures, Inv., IPR2014-00526, Paper 23 (September 3, 2014), the Board denied inter partes review of U.S. Patent No. 8,156,236.

In Apple Inc. v. VirnetX Inc., IPR2014-00481, Paper 11 (September 3, 2014), the Board instituted Inter Partes review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and 37 of U.S. Patent No. 7,188,180 (all of the challenged claims).

In Intel Corporation v. Zond LLC, IPR2014-00455, Paper 12 (September 3, 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 Apple Inc. v. VirnetX Inc., IPR2014-00482, Paper 10 (September 3, 2014), the Board instituted inter partes review of claims 1, 4, 6, 10, 12–15, 17, 20, 22, 26, 28–31, 33, 35, and 37 of U.S. Patent No. 7,188,180 (all of the challenged claims).

In Intel Corporation v. Zond LLC, IPR2014-00456, Paper 12 (September 3, 2014), the Board instituted inter partes review of review of claims 6–10 and 16–20 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Koninklijke Philips N.V. v. iLumisys, Inc., IPR2014-00448, Paper 8 (September 3, 2014), the Board instituted inter partes review of claims 1-10 of U.S. Patent No. 8,093,823.

In Phishme, Inc. v. Chapman Technology Group, Inc., IPR2014-00531, Paper 8, (September 3, 2014), the Board instituted inter partes review of claims 1–5, 8, 12, 13, 16, 19, 28–31, 37, and 40, of U.S. Patent No. 8,484,741 (but not challeged claims 35 and 41).

In Samsung Electronics America, Inc. v. LED Tech Development, LLC, IPR2014-00590, Paper 23, (September 3, 2014), the Board instituted inter partes review of claim 31 of U.S. Patent No. 6,095,661, after the Patent Owner disclaimed challenged claims 27, 28, 38, 42–47, and 49, and denying niter partes review of challenged claims 33, 34, 36, 37, 51, and 52.