New Filings

Samsung Electronics Co., Ltd. filed IPR2014-01142 challenging U.S. Patent No. 7,917,843, assigned to Arendi AS.

Samsung Electronics Co., Ltd. filed IPR2014-01143 challenging U.S. Patent No. 7,496,854.

Samsung Electronics Co., Ltd. filed IPR2014-01144 challenging U.S. Patent No. 7,496,854.

Institution Decision

E.I. du Pont de Nemours and Company v. Monsanto Technology LLC, IPR2014-00332, Paper 16 (July 11, 2014), the Board denied inter partes review of claims 1-13 of U.S. Patent No. 8,071,845.

E.I. du Pont de Nemours and Company v. Monsanto Technology LLC, IPR2014-00331, Paper 21 (July 11, 2014), the Board denied inter partes review ofof claims 1-26  of U.S. Patent No. 8,312,672.

Decisions on Request for Rehearing

NetFlix, Inc. v. OpenTV, Inc., IPR2013-00252, Paper 16 (June 11, 2014) the Board denied reheaing of its institution decision.

In Samsung Electronics Co., Ltd. in Black Hills Media, LLC, IPR2014-00717 Papers 6 and 7, IPR2014-00735, Papers 8 and 9 (July 10, 2014), the patent owner sent an improper email to the Board.  In response, the petitioner send an improper reply email to the Board.  The Board instructed that the proper way to address an improper contact with the Board:

If counsel becomes concerned about unauthorized filings by an opponent, counsel should request a conference with the Board. A substantive e-mail response is not appropriate and will not be considered. Any further such filings by either party will likely result in sanctions.

In Reloaded Games, Inc. v. Parallel Networks, LLC, IPR2014-00950, Paper 9 (July 8, 2014), Petitioner filed a second petition for inter partes review covering claims for which trial was not instituted in its first petition for itner partes review.  After observing that 37 C.F.R. § 42.107(b) gives a patent owner 3 months to file its preliminary response must be filed within 3 months of the filing date of a petition. 37 C.F.R. § 42.107(b), the Board noted that under 37 C.F.R. § 42.5(c)(1) it may modify times set by rule, taking into account any statutory pendency goal.  In view of the circumstances and the statutory deadlines in first inter partes review, the Board cut the patent owner time for response  in half, to preserve the possibility of joining the two proceedings.

In LG Electronics, Inc., v. NFC Technology LLC, IPR2014-00959 , Paper 3 (Julu 3. 2014), the Board granted the Petition a filing date, but pointed out that the font was incorrect and Petition failed to certifiy that the patent was subject to inter partes review.  Petitioner was given five business days to make correction.  The Board called the Petitioner’s attention to 37 C.F.R. § 42.6(a)(2)(ii)(A):

(ii) Either a proportional or monospaced font may be used:

   (A) The proportional font must be 14-point or larger, and
   (B) The monospaced font must not contain more than four characters per centimeter (ten characters per inch);

see also Frequently Asked Questions, G12:

In Ericsson Inc. v. Intellectual Ventures I LLC,  IPR2014-00958, Paper 4 (July 3, 2014), the Board granted a filing date, but gave the petitioner five business days to sequentially number the pages of its exhbits (37 C.F.R. § 42.63(d)(2)(i)) and eliminate the arguments from its claim charts.

In NHK Seating of America, Inc. v. Lear Corporation, IPR2014-00957, Paper 4 (July 2, 2014), the Board granted a filing date to the petition, but gave the petitioner five business days to elimnate the arguments from its claim charts.

In Skechers USA, Inc. v. Aura Technologies, LLC, IPR2014-00955, Paper 3 (July 2, 2014), the Board granted a filing date to the petition, but gave the petitioner five business days to elimnate the arguments from its claim charts.

Watch those details, the Board is!

In Hayward Industries, Inc. v. Pentainer Water Pool and Spa, Inc., IPR2013-00285, Paper 31, IPR2013-00287, Paper 31 (July 3, 2014), the Board provided some guidance on observations on cross-examination, answering the question whether a party can file observations on the cross-examination of its own witness. The Board expalined that the party taking the cross-examination files the observations.  Observations on cross-examination are not an opportunity to rehabilitate testimony given by a witness under cross-examination, and the Board cautioned that such observations would not be appropriate, citing CBS Interactive Inc. v. Wireless Science, LLC, IPR2013-00033, Paper 101, 3-5 (discussing the presentation of observations). Clarifying or otherwise rehabilitating testimony should be the subject of redirect of the witness after the cross-examination.

New Filings

Wireless Seismic, Inc. filed IPR2014-01113 challenging U.S. Pat. 7,124,028, IPR2014-0111 challenging U.S. Pat. 8,644,111 IPR2014-01115 challenging U.S. Pat. 8,296,068, all assigned to Fairfield Industries, Inc.

Ace Bed Co., Ltd. filed IPR2014-01119 challenging U.S. Pat. 7,404,223.

Koninklijke Philips N.V. filed IPR2014-01120 challenging U.S. Pat. 8,382,327, assigned to Ilumisys, Inc.

Broad Ocean Motor LLC filed IPR2014-01121 challenging U.S. Pat. 7,626,349 assigned to NIDEC Motor Corporation; IPR2014-01122 challenging U.S. Pat. 7,208,895 assigned to Emerson Electric Co., and IPR2014-01123 challenging U.S. Pat. 7,312,970 assigned to Emerson Electric Co.

Institution Decisions

In TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00296, Paper 15 , IPR2014-00297, Paper 15 , and IPR2014-00296, Paper 19, the Board denied inter partes review of  U.S. Patent No. 8,324,552.

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00397, Paper 6, the Board instituted an inter partes review of claims 1–16 of U.S. Patent No. 6,833,686.

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00400, Paper 9, the Board instituted an inter partes review of claims 3 and 4 (but not 1 and 2) of U.S. Patent No. 6,034,623.

Permobil, Inc. v. Pride Mobility Products Corporation,  IPR2013-00407, Paper 43 (July 2, 2014), the Board denied the patent owner’s motion to compel production evidence of copying of the products embodying patent owner’s claims under review.  The patent owner first argued that this was routine discovery under 37 C.F.R. § 42.51(b)(1)(iii)., because it was inconsistent with the position taken by petitioner.  The Board, however, did not find the requested discovery to be sufficient inconsistent with the petitioner’s testimony.

The patent owner also argued that the discovery should be permitted as additional discovery in the interest of justice. pursuant to 37 C.F.R. § 42.51(b)(2)(i).  The Board has said that “one requesting additional discovery should already be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be discovered.” noted that in Garmin v. Cuozzo, IPR2012-00001, (PTAB Mar. 5, 2013).  The Board was not persuaded that patent owner had established beyond speculation that any useful information will be discovered.

Another recurring concern by the Board was that the patent owner’s request of evidecne realting to devices embodying patent owner’s claims under review” inherently requires s determination of infringemetn, an issue that is not before the Board in an inter partes review.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00062, Paper (July 2, 2014) The Board denied rehearing of its decision not to institute an inter partes review of certain redundant grounds.  In its request for rehearing, petitioner provided an explanation of how the grounds were not redundant, but the Board said:

The fact that Rackspace points out explicitly now the relative benefits of certain grounds over others does not mean that we misapprehended or overlooked such benefits. In other words, we could not have misapprehended or overlooked an argument that was not presented in the first instance in the petition.

A petitioner presenting multiple grounds should justifiy the mulitple grounds in the petition, or risk a finding of redundancy that cannot be overcome.