Monthly Archives: March 2014

March 14, 2014

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New Filings

Target Corporation filed IPR2014-00508 challenging claims of U.S. Reissue Pat. RE043,563, and filed IPR2014-00509 challenging claims 1, 2, 5, 6, 10, 11, 15-19, and 24-29 of U.S. Reissue Pat. RE043,531, owned by Destination Maternity Corporation.

Final Written Decisions

The Board issued a final written decision in Denso Corporation v. Beacon Navigation GmbH, IPR2013-00026, Paper 24 (March 14, 2014),holding that claims 2, 3, 5, 6, 11-13, and 18-20 and 22 of U.S. Patent No. 6,029,111 (all of the claims still being contested) were invalid.

 

A Reprieve

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Suprisingly the Board granted a reprieve to a petitioner who uploaded the papers, but failed to complete the filing process.  In Linvatech Corporation v. Bonutti Skeletal innovations LLC, IPR2013-00624, Paper 22 (March 14, 2014), the Board denied patent owner’s request for rehearing of the Board’s decision to grant Petitioner’s renewed motion to correct the filing date accorded to the petition.  Petitioner uploaded the petition on September 25, 2013, but no one clicked the “submit” button until October 2, 2013, more than one year from service of an infringment complaint.  In its prelimary response, the patent owner argued the Petition was barrred.  The petitioner filed a motion to correct the filing date, which the Board denied with leave to refile.  The petitioner filed a renewed motion, which was granted, setting up the instant petition for rehearing by the patent owner.

The Board determined that Petitioner satisfied the statutory and regulatory requirements for filing a complete petition on September 25, 2013, but for clicking the “Submit” button in the Patent Review Processing System, and concluded that Petitioners’ inadvertent delay in clicking the “Submit” button until October 2, 2013, was a clerical error. On rehearing, the patent owner argued that Petitioner is not entitled to relief under 37 C.F.R. § 42.104(c) because it did not admit to making a clerical error. The Board noted that the rule “is remedial in nature and is therefore entitled to a liberal interpretation.” ABB, Inc. v. ROY-G-BIV Corp., IPR2013-00063, Paper 21 at 7 (Jan. 16, 2013). When, as here, the record supports a finding that a clerical error occurred, the Board may grant appropriate relief under 37 C.F.R. § 42.104(c) whether the party making the error admits to it or not. The Board also found it could grant relief under 37 C.F.R. § 42.5(b) to waive the regulatory requirement that electronic filing is completed only upon clicking the “Submit” button in PRPS.

Accordingly, Patent Owner’s request for rehearing was granted to the extent the Board modified its our prior decision to invoke 37 C.F.R. § 42.5(b), but was denied in all other respects.

 

March 13, 2014

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Final Written Decisions

The Board issued a Final Written Decision in Liberty Mutual Insurance Company v. Progressive Casualty Insurance Company, CBM2013-00004, Paper 53 (March 13, 2014), holding claims 1-78 of U.S. Patent No. 8,090,598 (all of the challenged claims), invalid.

Rearranging Trial Permissible, but not Permitted

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In Gnosis S.P.A., v. Merck & CIE, IPR2013-00117, Paper 64 (March 12, 2014), the Merck, the patent owner, tried to get the Board to allow it to give a rebuttal argument during the hearing, arguiing that it should be allowed to argue last, even if just briefly, because it bears the burden of proof as to evidence of secondary considerations of nonobviousness. While noting that the argument order may be reversed, such as when the only issue in the case is whether proposed substitute claims are patentable, the Board noted taht Petitioner still had the burden of proving invalidity, including the effect of seconday considerations, such that reordering the proceedings was not appropriate.

March 12, 2014

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FInal Written Decisions

 

The Board issued a final written decision in Schrader-Brodgeport International, Inc. v. Continental Automotive Systems US, Inc., IPR2013-00014, Paper 32 (March 12, 2014), finding claims 1-5 and 7-11 of U.S. Patent No. 6,998,973 (all of the contested claims) invalid.

 

March 10, 2014

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New IPR Filing

Global Tel*Link Corporation filed IPR2014-00493 against U.S. Patent No. 7,899,167, assigned to SECURUS TECHNOLOGIES, INC. and T-NETIX, INC.

New Trials Instituted

The Board initiated an IPR trial in Broadcom Corporation v. Telefonaktiebolaget LM Ericsson, IPR2013-00636, Paper 25 (March 10, 2014), as to claim 1 of U.S. Patent No. 6,424,625 (the only challenged claim).  The Board also initiated an IPR Trial in Broadcom Corporation v. Telefonaktiebolaget LM Ericsson, IPR2013-00601, Paper 29 (March 10, 2014), as to claims 1, 2, 4, 6, 8, 15, 22, 25, 26, 29, 32, 34, 45, 46, 49, 52, and 54 of U.S. Patent No. 6,772,215 (all of the challengd claims).

The Board initiated an IPR Trial in GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00043, Paper 16 (March 10, 2014), as to claims 1-37 of U.S. Patent No. 6,475,435 (all of the challenged claims).  The Board initiated an IPR Trial in GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041, Paper 15 (March 10, 2014), as to claims  1 and 4-20 of U.S. Patent No. 6,945,013 (but not as to claims 2 and 3, which were also challenged).

The Board initiated a CBMR Trial in Trulia, Inc. v. Zillow, Inc., CBM2013-00056, Paper 13 (March 10, 2014) of claims 2, 5, 15-25, and 40 of U.S. Patent No. 7,970,674 (all of the challenged).

 

 

 

 

 

 

 

 

 

w Trials Intiated

Too Late to the Party

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In SAP American v. Pi Net International, CBM2014-00018 Paper 16, (March 7, 2014) the Board denied joint of the proceedings, filed October 21, 2013, with CBM2013-00013, filed March 22, 2013, agreeing with the patent owner that the schedules of the two proceedings were incompatible.

Board will not Keep Highly Confidential Documents out of In-House Counsel’s Hands

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In Amneal Pharmaceuticals LLC v, Supernus Pharmaceuticals, Inc., IPR2013-00372, Paper 33 (March 7, 2014), the Board rejected Supernus proposed protective order which sought to create a category of highly confidential documents that we not avaialable to any of Amneal’s employees, including in house counsel, who Supernus alleged were involved in business decision making.  Appeal to miss Supernus point entirely, the Board commented:

The risk of publication is no different for the “highly confidential” materials than for the other confidential information.  We discern, therefore, no meaningful purpose in ordering different access restrictions for them.