In Google Inc. v. Visual Real Estate, Inc., IPR2014-01338, Paper 3, IPR2014-01339, Paper 3, IPR2014-01340, Paper 3, and IPR2014-01341, Paper 3 (September 2, 2014), the Board accorded the petitions a filing date, but objected to the claim charts, because each contained arguments. The Board provided some examples of these “arguments” including saying “To the extent that . . .” and “For the reasons described above . . .” and “well-known methods . . .”.
In TriVascular, Inc. v. Shaun Samuels, IPR2013-00493, Paper 39 (September 2, 2014) the Board sustained a number of objections to the patent owner’s demonstrative exhibits. The Board agreed that modified versions of the patent drawings, and animations of the patent drawings “improperly display material not made of record previously in this proceeding” and barred the patent owner from using, citing, or relying upon this material during the hearing, but allowing the patent owner to replace the barred material, however, with evidence that was made of record timely in the case. The Board also barred a demonstrative that did not exactly quote from evidence of record, but allowed the patent owner to substitute a demonstrative with exact quotation. The Board did not bar material reproduced exactly from the cited record evidence, which was not previously relied upon, saying that this went to the weight that would be given, not to whether it could be presented.
New Filings
The Dow Chemical Company filed IPR2014-01436 challenging U.S. Patent No. 7,491, 753 assigned to Mallard Creek Polymers, Inc.
The Dow Chemical Company filed IPR2014-01437 challenging U.S. Patent No. 7,981,946 assigned to Mallard Creek Polymers, Inc.
Dispositions
in Ariosa Diagnostics v. Isis Innovation, IPR2012-00022, Paper 166 (September 2, 2014), the Board found that claims 1, 2, 4, 5, 8, 19, 20, 24, and 25 of U.S. Patent No. 6,258,540 were unpatentable, but that claims 3, 12, 13, 15, 18, 21, and 22 were not shown to be unpatentable. Patent owner’s motion to amend was denied.
In McClinton Energy Group L.L.C. v. Magnum Oil Tools International, Ltd., IPR2013-00231, Paper 31 (September 2, 2014), the Board found claims 1–20 (all of the challenged claims) of U.S. Patent No. 8,079,413 were unpatentable.
In Oracle Corporation v. MAZ Encryption Technologies LLC, IPR2014-00472 (September 2, 2014), the Board termianted the proceeding on the joint motion of the parties.
New Filings
Ford Motor Company filed IPR2014-01415 against U.S. Patent No. 8,214,097, assigned to Paice LLC.
In GoerTek, Inc. v. Knowles Electronics, LLC, IPR2014-01009, Paper 7, (August 29, 2014), the Board denied the patent owner’s motion to stay a concurrent reexamination as premature, when the Board had not yet instituted a inter partes review.
New Filings
Pay-Plus Solutions, Inc. filed IPR2014-01414 challenging U.S. Patent No. RE 043,904.
Institution Decisions
In Mohawk Resources Ltd. v. Vehicle Service Group LLC, IPR2014-00464, Paper 10 (August 29, 2014), the Board instituted inter partes review of claims 39, 42–51, 53, 55–61, 63–65, 68, 70, 71, 76, 77, 79, 84, 133–135, and 157of U.S. Patent No. 6,983,196 (all of the challenged claims).
Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454 Paper 12 (August 29, 2014), the Board denied inter partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No. 5,563,883.
Dispositions
In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.
In Syntroleum Corporation v. Neste Oil OYJ, IPR2013-00178, Paper 63 (August 29, 2014), the Patent Owner’s Motion to Amend was granted with respect to the cancellation of claims 1–20 and denied with respect to the substitution of claims 21–30.
Rehearing Decisions
In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2014-00150, Paper 12 (August 29, 2014) the Board denied rehearing of the Board’s decision to institute inter partes review, arguing the Board improperly relied upon its own speculation as to how a referenced device operates and improperly asserted that the patentee acted as its own lexicographer.
In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2014-00150, Paper 13 (August 29, 2014) the Board denied rehearing of the Board’s decision not to institute inter partes review of on an alternative grounds.
In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2013-00472, Paper 28 (August 29, 2014) the Board denied rehearing of the decision to institute inter partes review.
In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00304, Paper 19(August 29, 2014), the Board denied rehearing of the decision to institute inter partes review.
In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00305, Paper 19(August 29, 2014), the Board denied rehearing of the decision to institute inter partes review.
In Primera Technology, Inc, v. Accuplace, IPR2013-00196, Paper 52 (August 29, 2014), the Board denied rehearing of its FInal Written Decision that all challenged claims (claims 1-20) of U.S. Patent No. 8,013,884 were unpatentable.
In PNY Technologies, Inc. v. Phison Electronics Corp., IPR2013-00472, Paper 28 (August 29, 2014), the Board denied rehearing of its decision not to institute inter partes review as to some of the asserted grounds.
New Filings
BlackBerry Corporation filed IPR2014-01406 challenging U.S. Patent No. 6,947,748 assigned to Adaptix, Inc.
BlackBerry Corporation filed IPR2014-01408 challenging U.S. Patent No. 7,454,212 assigned to Adaptix, Inc.
Institution Decisions
In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00645, Paper 12, the Board instituted itner partes review of claims 1, 2, 5, 6, 10, 18–22, 26, 27, 32, 40, and 61 of U.S. Patent No. 6,738,697 (all of the challenged claims).
Rehearing
In NuVasive, Inc. v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper 67 (August 28, 2014), the Board denied rehearing of the final written decision the NuVasive had not shown by a preponderance of the evidence that claims 9–16 and 24–30 of US Patent No. 8,251,997 were unpatentable.
In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00257, Paper 18 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.
In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00259, Paper 21 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.
In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00293, Paper 21 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.
In TRW Automotive US LLC v. Magna Electronics Inc., IPR2014-00296, Paper 17 (August 28, 2014), the Board denied rehearing of its refusal to institute inter partes review.
In Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 32 (August 28, 2014), the petioner filed a Supplemental Notice of Deposition of patent owner’s witness, indicating that its cross-examination of the witness “may rely on,” among other things, a prior declaration by the witness filed in district court and three U.S. patents. The patent owner requested a conference with the Board because such cross- examination necessarily would be outside the scope of the direct testimony set forth in his IPR Declaration.
The Board disagreed with the Patent Owner, noting:
We contemplate multiple scenarios in which other documents may be used for cross-examining a witness, while staying within the scope of his or her direct testimony. The fact that a document is not cited or discussed in a declaration is not dispositive for purposes of enforcing § 42.53(d)(5)(ii).
In Ford Motor Company v. Cuozzo Speed Technologies, Inc., IPR2014-01393, Paper 3 (August 28, 2014), the Board granted the petition a filing date, but required petitioner to correct its claim chart in five days, noting:
Claim charts should only be used to provide an element-by-element showing as to how the prior art teaches the limitations of a claim (e.g., citations to a prior art reference, quotations from a prior art reference). Claim charts may not include 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. A mere citation to an expert declaration (e.g., “See Ex. 1015 ¶ 29”) in a claim chart is permissible, but anything more than a mere citation is improper.
Institution Decisions
In Intel Corporation v. Zond, LLC, IPR2014-00444, Paper 13 (August 27, 2014), the Board instituted inter partes review of claims 2, 3, 5–9, 13–16, 19, 41–43, and 45 of U.S. Patent No. 7,147,759 (all of the challenged claims).
In Intel Corporation v. Zond, LLC, IPR2014-00447, Paper 13 (August 27, 2014), the Board instituted inter partes review of claim 40 of U.S. Patent No. 7,147,759 (all of the challenged claims).
Final Written Decisions
In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 45 (August 27, 2014), the Board found claims 1-10 of U.S. Patent No. 7,999,721 (all of the challenged claims) were unpatentable.
Rehearing Decisions
In TRW Automotive U.S. LLC v. Magna Electronics Inc., IPR2014-00258, Paper 18 (August 27, 2014) the Board denied rehearing of the denial of partes review.