Category Archives: Covered Business Methods

December 22, 2014

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Institution Decisions (4)

In Jiawei Technology (USA) Ltd. v. Simon Richmond, IPR2014-00935, Paper 11 (December 22, 2014), the Board instituted inter partes review of claims 1–7, 9, 10, 14, 17–20, 23, 28, 43, 45 and 48–50 (all 21 of the challenged claims) of U.S. Patent No. 8,089,370.

In Nestle USA, Inc.v. Steuben Foods, Inc., IPR2014-01235, Paper 12 (December 22, 2014), the Board instituted inter partes review of claims 18–20 (all the challenged claims) of U.S. Patent No. 6,945,013.

In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01027, Paper 16, (December 22, 2014) the Board declined to institute inter partes review of claims claims 13–20, 25, and 36 (the “challenged claims”) of U.S. Patent No. 6,020,980.

In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01028, Paper 13, (December 22, 2014) the Board declined to institute inter partes review of claims 1–12, 21–24, 26–35 (the “challenged claims”) of U.S. Patent No. 6,020,980.

Dispositions (3)
In Metavante Corp. v. Checkfree Corp., CBMR2013-00032, Paper 50 (December 22, 2014), the Board issued a Final Written Decision holding that claims 1-60 of U.S. Patent No. 7,792,749 are unpatentable because they do not recite patent eligible subject matter under 35 U.S.C. § 101.

In Dell Inc. v. Acceleron, LLC, IPR2013-00440, Paper 41 (December 22, 2014), the Board issued a Final Written Decision holding that claims 1–4, 6–13, 18–20, and 30 of U.S. Patent No. 6,948,021 were unpatentable but not challenged claims 14–17 and 34–36. (16 out of 23 claims)

In Fidelity National Information Services, Inc. v. CheckFree Corporation, CMB2014-00030, Paper 51 (December 22, 2014), the Board issued a Final Written Decision that claims 1-21 of U.S. Patent No. 7,853,524 are not patentable.

In Fidelity National Information Services, Inc. v. CheckFree Corporation, CMB2014-00031, Paper 49 (December 22, 2014), the Board issued a Final Written Decision that claims 1-20 of U.S. Patent No.7,996,311 are not patentable.

December 12, 2014

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Dispositions

In Cyanotech Corporation v.  The Board of Trustees of the University of Illinois, IPR2013-00401, Paper 65 (December 12, 2014), the Board issued a final written decision finding claims 1-14 and 26 unpatentable, but not challenged claims 15, 21, and 22.

In Apple Inc. v. Smartflash LLC, CBM2014-00102, CBM2014-00106, CBM2014-00108, and CBM2014-00112 (December 12, 2014), the Board terminated the proceedings on the joint motion of the parties.

Indefiniteness, Lack of Written Description in CMBR and PGR

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In Dealer Socket, Inc. v. AutoAlert, Inc., CBM2014-001146, Paper 19 (December 9, 2014), the Board instituted a covered business method review of claims 1, 3–5, 10, 12–14, 16, and 19 of U.S. Patent No. 8,086,529 on grounds of indefiniteness under §112, lack of written description, and patent ineligible subject matter under §101.  DealerSocket is timely reminder to practitioners that invalidity under 35 USC §112 available under covered business method review, as well as its cousin, post grant review.

The indefiniteness challenge centered around the claim language: determining whether: “changed information may affect whether it is favorable for the customer to replace a first vehicle and first financial terms with a second vehicle and second financial terms”.  The Board agreeing with Dealer Socket that “may affect” and favorable” were indefinite:

Given the evidence in this record, we determine that DealerSocket has established that the “may affect” limitation is more likely than not indefinite.  This limitation includes not one, but two terms of degree, “may affect” and “favorable.” Both are highly subjective. The uncertainty is multiplied when one subjective term is used to modify another, as is the case here. Contrary to the argument of AutoAlert, the Specification contains no objective standard for determining reasonably precise boundaries of either term.

The written description challenged focused on the claim language “automatically accessing in real-time, by the computer system, information that has changed.”  The Board noting that the only disclosed embodiment performing retrieval of “changed information” is not associated with the immediate presence of any particular customer, and is not described as occurring in real-time.

However just because you can, doesn’t mean you should.  There is at least the theoretical possibility of fixing some 35 USC §112 defects through amendment, while a successful §112 challenge in court results in invalidity.  Of course, indefiniteness challenges are more likely to be overcome by rewording than the lack of an adequate written description.

Not So Fast

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MotionPoint Corporation v. TransPerfect Global, Inc., CBM2014-00060, Paper 27 (November 26, 2014) the Board denied petitioner’s motion to expedite the proceedings, finding that further acceleration would prejudice the patent owner.

Too Little, Too Late for Settlement

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In salesforce.com, Inc. v. VirtualAgility Inc., CBM2013-00024 (November 24, 2014), the Board denied patent owner’s request for authorization to file a Motion to Vacate the Final Written Decision and to Terminate the Proceeding after the Final Written decision has been Vacated.  The Board noted that under 35 U.S.C. § 327(a), it may continue to completion of trial to render judgment even if the parties have settled and the proceeding is terminated with respect to each petitioner, and reasoned that if it can proceed to issuance of a Final Written Decision despite settlement, then an already issued Final Written Decision should not be vacated based on settlement between the parties.

November 24, 2014

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New Filings

Pfizer, Inc. filed IPR2015-00293 challenging U.S. Patent No. 8,173,127, assigned to Intellect/Neurosciences, Inc.

World Bottling Cap, LLC filed IPR2015-00296 challenging U.S. Patent No. 8,550,271, assigned to Deutsche Bank AG.

Institution Decisions

In Yamaha Corporation of America v. Black Hills Media, LLC, IPR2014-00766, Paper  7 (November 24, 2014), the Board instituted inter partes review of claims 4, 5, 33, and 34 of U.S. Patent No. 8,214,873 (all of the challenged claims).

In Arris Group, Inc. v. C-Cation Technologies, LLC, IPR2014-00746, Paper 22 (November 24, 2014), the Board instituted inter partes review of claim 14 of U.S. Patent No. 5,563,883 (but not challenged claims 1, 3, and 4).

In CareCloud Corporation v. athenahealth, Inc., CBM2014-00143, Paper  7, (November 24, 2014), the Board instituted covered business method review of claims 1-20 of U.S. Patent No. 7,617,116.

Dispositions

In Accord Healthcare, Inc. v. Helsinn Healthcare S.A., IPR2014-00010, Paper 10 (November 24, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Callidus Software, Inc. v. Versata Development Group, Inc., CBM2013-00052, Paper 50, CBM2013-00053, Paper 46, CBM2013-00054, CBM2014-00117, CBM2014-00118 (November 24, 2014), the Board terminated the covered business method review on the joint motion of the parties, affecting U.S. Patent Nos. 7,904,326, 7,958,024, 7,908,304, 7,908,304, and 7,958,024.

Board Rejects Attempt to Supplement Petition

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In PNC Bank, N.A. v. SECURE AXCESS, LLC, CBM2014-00100, Paper 18 (November 5, 3014), the Board denied petitioner authorization to file a motion to submit supplemental information to enter five to six new references in the record of the proceeding.  The petitioner acknowledged that each of the new references was available publically prior to the filing of the Petition, and that Petitioner could have discovered the references had it used the alternate search strategy. The Board was not persuaded that Petitioner could an sufficiently establish “why the supplemental information could not have been obtained earlier.” 37 C.F.R. § 42.223(b).

 

October 23, 2014

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Institution Decision

In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00647, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 10, 11, 15, 16, 17, 19, 20, and 23 of U.S. Patent No. 5,745,000.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 12 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In  IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00668, Paper 8 (October 23, 2014), the Board instituted inter partes review of claims 1–6, 11, 12, 14–17, and 21–27 of U.S. Patent No. 6,840,576, but not challenged claim 28.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 11 (October 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In DealerSocket, Inc. v. AutoAlert, LLC, CBM2014-00139, Paper 12 (October 23, 2014), the Board instituted a covered business method review of claims 1 and 3–7 of U.S. Patent No. 8,396,791.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In Eli Lilly and Company v. Los Angeles BioMedical Research Institute at Harbor-UCLA Medical Center, IPR2014-00693, Paper 14, (October 23, 2014), the Board instituted inter partes review of claims 1–5 of US 8,133,903.

Dispositions

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 1–18 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00277, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 19–30 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290, Paper 46 (October 23, 2014).

Joinder

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board joined the proceeding with IPR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00819.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 12 (October 2014), the Board joined the proceeding with IPR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board joined the proceeding with PR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00821.

October 20, 2014

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New Filings

Nestle Healthcare Nutrition, Inc., filed IPR2014-00094 challenging claims 1, 2, 16-18, 26, and 27 of U.S. Patent No. 6,209,591 owned by Stork Food & Dairy Systems B.V.

Institution Decisions

In The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. America’s Collectibles Network, Inc., CBM2014-00119, Paper 10 (October 20, 2014) the Board instituted a covered business method patent review of claims 1–39 (all of the challenged claims) of U.S. Patent 8,370,211.

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.

 

October 16, 2014

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Institution Decisions

In United States Endoscopy Group, Inc. v. CDx Diagnostics, Inc.,  IPR2014-00642, Paper 7 (October 16, 2014), the Board instituted inter partes review of claims 1-39 of U.S. Patent No. 6,258,044 (all of the challenged claims).

In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00661, Paper 9 (October 16, 2014), the Board instituted inter partes review of claims 1, 3, 4, 6, 11, 13, 14, 16, 18, and 20 of U.S. Patent No. 7,735,932 (but not challenged claim 7).

In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims 19–24 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In United States Postal Service v. Return Mail, Inc., CBM2014-00116, Paper 11 (October 16, 2014), the Board instituted covered business method review of claims 39–44 (all of the challenge claims) of U.S. Patent No. 6,826,548.

Dispositions

In Trulia, Inc. v. Zillow, Inc., CBM2013-00056, Paper 44 (October 16. 2014), the Board terminated the covered business method review on the joint motion of the parties.

Joinder Motions

In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00807.

In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00808.

Rehearing

In Travelocity.com LP v. Cronos Technologies LLC, CBM2014-00082, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute covered business method review.

In Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute inter partes review.