New Filings

Intel Corporation filed IPR2014-00470 and IPR2014-00473 against U.S. Patent No. 7,811,421assigned to Zond, Inc.

Apple Inc. filed IPR2014-00481and IPR2014-00482 against U.S. Patent No. 7,188,180 assigned to Virnetx, Inc.

Apple Inc. filed IPR2014-00483 and IPR2014-00484 against U.S. Patent No. 7,987,274 assigned to Virnetx, Inc.

Finjan, Inc. filed IPR2014-00492 against U.S. Patent No. 8,171,553 assigned to Fireeye, Inc.

Trials Instituted

The Board instituted a CBMR Trial in SAP America v Pi-Net International CMB2014-000018, Paper No. 14 (March 7, 2014).

The Board instituted IPR Trials in Sealed Air Corporation v. Pregis Innovative Packaging, Inc., IPR2013-00554, Paper 13 (March 6, 2014), and in IPR2013-00557, Paper 12  (March 6, 2014).

The Board instituted an IPR Trial is CaptionCall, L.L.C v. Ultratech, Inc., IPR2013-00549, Paper 7 (March 5, 2014).

The Board instituted CBMR Trials in Callidus Software, Inc. v. Versata Development Group, Inc., CMB2013-00052, Paper No. 14 (March 4, 2014), and CMB2013-00053, Paper No. 14 (March 4, 2014).

The Board instituted an IPR Trial in Apple Inc. v. NetAirus Technologies LLC, IPR2014-00030, Paper 12 (March 4, 2014),

The Board instituted an IPR Trial in Athrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-00632 Paper 12, (March 3, 2014).

Trials Denied

The Board denied CBMR trials in MasterCard International Incorporated v. John D’Agostino, CBM2013-00057, Paper 10 and CBM2013-00058, Paper 9 (March 7, 2014).

The Board denied IPR trial in Gracenote, Inc. v. Iceberg Industries LLC, IPR2-13-00552 (March 7, 2014).

Proceedings Terminated

The Board terminated the Trial in Research in Motion Corporation v. MobileMedia Ideas LLC, IPR2013-00117, Paper 65 (March 7, 2013), after determining that it could not construe the means-plus-function limitations in the claims.

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (March 7, 2014), the Board provided detailed guidance on motions to amend.  Considering that not a single motion to amend has been granted, the patent owners will not doubt appreciate the effort, but the fact that the explanation of the rules itself takes 5 pages of 14-point double spaced type, illustrates the near impossivility of preparing an acceptable motion to amend, including the text of the amended claims, in tje fifteen pages alotted.

1. There should be no “amending in place.” Any claim with a changed scope, subsequent to the amendment, should be included in the claim listing as a proposed substitute claim, and have a new claim number.

2. A motion to amend claims may only cancel claims or propose substitute claims. The request to cancel claims will not be regarded as contingent.

3. Each proposed substitute claim must be reproduced in the claim listing, and the claim listing should be set forth in the motion itself, and not a claim appendix. For each proposed substitute claim, the motion must show, clearly, the changes of the proposed substitute claim with respect to the original patent claim which it is intended to replace. No particular form for showing changes is required, but the Board suggests the use of brackets to indicate deleted text and underlining to indicate inserted text.

 4. Although there is a presumption that only one substitute claim is needed for each original patent claim, this does not mean the patent owner is in compliance so long as the total number of claims before and after the amendment remain the same. The requirement is viewed on a per claim basis.

5. A proposed substitute claim should be responsive to the ground of unpatentability applicable to the original patent claim for which it is a substitute. 37 C.F.R. § 42.121(a)(2)(i). Generally, that means the proposed substitute claim should not eliminate any feature or element of the original patent claim which it is intended to replace. If there is a special circumstance to justify deviation from that general rule, the motion should provide adequate and persuasive explanation. A proposed substitute claim may not enlarge the scope of the patent claims. 37 C.F.R. § 42.121(a)(2)(ii).

6. The patent owner bears the burden of establishing that it is entitled to the relief requested in the motion to amend. 37 C.F.R. § 42.20(c). However, explaining patentability over references applied by the petitioner against the original patent claims is not the “main event”. The patent owner must show patentability over the prior art in general, and not just over the references applied by the petitioner against the original patent claims.  The motion should provide sufficient underlying facts regarding any feature added by the proposed substitute claim. For instance, it should be revealed whether the feature was previously known anywhere, in whatever setting, and whether or not the feature was known in combination with any of the other elements in the claim. If any such combination was known, the motion should explain the surrounding facts in that regard, and why it would not have been obvious for one with ordinary skill in the art to adapt that knowledge for use with the rest of the claim elements.

The patent owner is not expected to know everything that a hypothetical person of ordinary skill in the art is presumed to know, but the patent owner is expected to reveal what it does know, to the extent that it is relevant. There should be a discussion of the ordinary skill in the art, with particular focus on the feature added to provide the basis of patentable distinction. The discussion should be specific about the technical knowledge pertaining to the feature added, including whether there are textbooks or conventional practices relating to the feature, and what basic skillset would be possessed by one with ordinary skill in the art. A conclusory statement to the effect that the closest prior art are the references in the record is not meaningful.

7. In the motion to amend, the patent owner must show written description support in the original disclosure of the application as filed for each proposed substitute claim. 37 C.F.R. 42.121(a)(2)(ii). 　It is inadequate to show support for just the feature added by the proposed substitute claim, the patent owner must show written description support for the entire combination claimed.

8. The patent owner should provide a proposed claim construction of any new term used in a proposed substitute claim, the meaning of which reasonably can be anticipated as subject to dispute.　 If a proposed substitute claim adds a means-plus-function element, the corresponding structure, material, or acts described in the specification should be identified. If a term should be given its plain and ordinary meaning, it should be expressly defined in the motion, together with the supporting evidence.

In Research in Motion Corporation v. MobileMedia Ideas LLC, IPR2013-00117, Paper 65 (March 7, 2013), the Board terminated the Trial after determining that it could not construe the means-plus-function limitations in the claims.  The Board noted that the disclosure of a general purpose computer was insufficient to support computer-based means-plus-function elements without disclosure of the algorithm. The Board found that it could not evaluate the claims, if it could not construe them, and therefore terminated the trial.  While the Board cannot invalidate claims under Section 112 in an inter partes review, it has nonetheless, marked these claims for invalidation

In Commscope, Inc, v. Pangrac and Associates, IPR2013-00461, Paper 11 (March 5, 2014), the Board reminded the parties how to settle an IPR.  Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, explaining that the rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and filed with the Board.  37 C.F.R. § 42.74.

The Board explained that a joint motion must: (1) include a brief explanation as to why termination is appropriate; and (2) confirm the absence of any related district court litigation involving the patent in dispute.  The Board reiterated that the joint motion to terminate must be accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and said that a redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.

The settlement areement can be treated as business confidential 37 C.F.R. § 42.74(c), the parties must file the settlement agreement electronically in the Patent Review Processing System (PRPS) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).  Detailed instructions can be found in FAQ G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp:

New Filings

Medtronic, Inc. filed IPR2014-00487 challenging claims 1-14, 19, 20, and 23-27 of U.S. Patent No. 8,361,156 on Systems and Methods of Spinal Fusion, assigned to Nuvasive, Inc.  As Medtronic explained in its Petition, it presents new arguments and provides new evidence to cure any noted deficiencies in Petitioner’s previously filed petition for IPR, IPR2013-00504, which was denied on February 13, 2014.

A party seeking to submit supplemental information more than one month after the date the trial is instituted must request authorization to file a motion to submit the information.  The motion must show why the supplemental information reasonably could not have been obtained earlier, and the consideration of the supplemental information would be in the interests of justice.  37 C.F.R. § 42.123(b).  In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00363, Paper 20 (March 5, 2014)  the Board denied Petitioner’s requies to file supplemental information because counsel for Petitioner did not provide a reason sufficient to show why Petitioner cannot submit such evidence in connection with a Petitioner Reply to the Patent Owner Response.  37 C.F.R. § 42.23(b).

37 C.F.R. § 1.68 provides

Declarations may be presented in lieu of an oath: if, and only if, the declarant is on the same document, warned that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001) and may jeopardize the validity of the application or any patent issuing thereon. The declarant must set forth in the body of the declaration that all statements made of the declarant’s own knowledge are true and that all statements made on information and belief are believed to be true.

If the required statement is omitted it can, if caught in time, be corrented, but the process set forth in MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274, Paper 15  (March 5, 2014) can be tedious.

New Filings

Oracle Corporation filed IPR2014-00472 against MAZ Technologies LLC, challengnig U.S. Patent No. 7,096,358.

FLIR Systems, Inc. filed IPR2014-00411 against FURRY BROTHERS, LLC, challenging  U.S. Patent No. 8,426,813.

FLIR Systems, Inc. filed IPR2014-00434 against LEAK SURVEYS, INC., challenging  U.S. Paent No. 8,193,496.

Schrader International, Inc., filed IPR2014-00476 against LEEMANN, KARL,RUCHTI, HEINZ, challenging U.S. Patent No. 5,602,524.

Institution Decisions

The Board intiated an inter partes review  in Microsoft Corporation v. Enfish, LLC, IPR2013-00559, Paper 14, as to claims 1-15 and 31-45 of U.S. Patent No. Patent 6,163,775.

The Board intiated an inter partes review  in Microsoft Corporation v. Enfish, LLC, IPR2013-00563, Paper 14, as to claims 16-26, 30, 46-56, and 60 of the U.S. Patent No. Patent 6,151,604, but denying review as to 27-29 and 57-59.

The Board initiated an inter partes review in BUTAMAX™ Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00539, Paper 9, as to  claims 1-9 and 11-19 of U.S. Patent No. 8,273,565.

The Board initaited an inter partes review in GoerTek Electronics, Inc. v. Knowles Electronics LLC, IPR2013-00523, Paper 10, as to claims 1, 2, 4, 5, and 11-13 of U.S. Patent No. 8,121,331.

The Board initaited an inter partes review in Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00538, Paper 8, as to claims 10 and 13 of U.S. Patent No. 5,949,438, but not as to 1, 2, 6, 8, and 11.