Monthly Archives: April 2014

No 102(e) Prior Art in a CBMR

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In Trulia, Inc, v. Zillow, Inc., CBM2013-00056, Paper 19 (April 10, 2014), it was called to the Board’s attention that the prior art relied upon in the petition was 102(e) which is not proper prior art for a covered business method review.  The petitioner pointed out that each reference had a corresponding publication that was 102(b) prior art, but the Board found that it could not change the grounds on which the trial was instituted, and intead suggested that the petitioner file an second petiton, replacing the 102(e) art with the 102(b) art, and move to join the proceedings.  While the time for joinder passed the day of the Board’s order, the Board said it would waive the joinder deadline if both parties were amenable,

 

Marathon Cross Examination

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In Facebook Inc. v. Software Rights Archive, LLC, IPR2013-00479, Paper 28 (April 9, 2014) the patent owner asked for leave to cross-examine petitioer’s expert witness for a total of 14 hours, in view of the fact that there were four separte petitions challenging three patents.  The petitioners objected.  The Board noted that unless stipulated by the parties or ordered by the Board, cross-examination shall be subject to a seven hour time limit. 37 C.F.R. § 42.53(c)(2). However, as the patent owner noted, the petitioner’s expert was a declarant in four proceedings, i.e., IPR2013-00478, IPR2013-00479, IPR2013-00480, and IPR2013-00481. The Board concluded that the patent owner’s request for more than seven hours was reasonable, and granted patent owner up to fourteen hours for cross-examination.

Can’t Sneak in Another Argument

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In Rackspace Hosting, Inc. v. Rotatable Technologies, LLC, IPR2013-00248, Paper 27  (April 9, 2014), the petitioner submited a seven page requiest for oral argument including arguments,  The Board noted that while a request may provide a short list of arguments to be raised, detailed briefing is not proper in the request, and therefore expunged the paper, after duly noting the request for oral argument.

Experts and Redundant Prior Art

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In DeLaval International AB v. Lely Patent N.V., IPR2013-00575, Paper 18 (April 9, 2014), the patent owner objected the petitioner’s expert declaraton that referred to prior art that was not part of the instituted grounds (because of redundancy).  The Board solved the problem by allowing the petition to submit an updated expert declaration.

April 8, 2014

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Petitions Filed

Luxottica Retail North America, Inc., filed IPR2014-00593 challenging claims 1-7, 9, 12, 14, 15 and 17-19 of  U.S. Patent No. 6,624,843 assigned to Lennon Image Technologies LLC.

Trials Intituted

In Google Inc. v. Unwired Planet, LLC, CBM2014-00006, Paper 11 (April 8, 2014), the Board instituted a covered business method review against claims 25-29 (all of the challenged claims) of U.S. Patent No. 7,203,752.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00073, Paper 14 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24, 30, and 33-37 of U.S. Patent No. 8,192,356, but not as to challenged claims 25 and 26.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00074, Paper 15 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24-26, 30, and 33-37 (all of the challenged claims) of U.S. Patent 8,192,356.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00076, Paper 13 (April 8, 2014), the Board refused to institute an inter partes review against claims 1, 2, 4, 5, 10, 15, 17, and 18 of U.S. Patent No. 8,016,767.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00081, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00087, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.

In Google v. Unwired Planet, LLC, CBM2014-000005, Paper 10 (April 8, 2014), the Board instituted a covered business method review against claims 1-6 of U.S. Patent No. 7,024,205.

In Google v. Unwired Planet, LLC, IPR 2014-00037, Paper 9 (April 8, 2014), the Board instituted an Inter Partes Review against claim 25, but not dependent claims 26–29, of U.S. Patent No. 7,203,752

In Google v. Unwired Planet, LLC, IPR 2014-00036, (April 8, 2014), the Board instituted an Inter Partes Review against claims 1-6 of U.S. Patent No. 7,024,205.

It May Be Easier to Seek Forgiveness Than Ask Permission, But it Doesn’t Work Before the PTAB

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In Apple Inc. v. Benjamin Grobler, IPR2014-00060, Paper 16 (April 8, 2014), Apple filed a request for rehearing of the denial of inter partes review, and Grobler without permission, filed a reply. The Board noted that the patent owner did not obtain authorization from the Board to file its Reply, and therefore “the Board will not consider the Reply and the Reply will be expunged. 37 C.F.R. § 42.7(a)”.  All’s well that ends well, however, in Paper 15 the same day, the Board denied Apple’s request for rehearing.

Replies Must only Reply

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In Veeam Software Corporation v. Symantec Corporation, IPR2013-00141. Paper 35 (April 7, 2014), the petitioner complained that the patent owner’s repies to petioner;s opposition to the motion to amend because they exceeded the scope of the opposition.  The Board reminded the parties:

The scope of a reply is limited. A reply may only respond to arguments raised in a corresponding opposition. 37 C.F.R. § 42.23(b). A reply is not an opportunity to raise new issues or provide additional evidence that could reasonably have been provided in the motion. A reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.

The board expunged the replies, but did give the patent owner five days to try again.

Board Declines to Make Evidentiary Rulings Before the Final Written Opinon

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In Sony Corporation v. Yissium Research Development Company of the Hebrew University of Jerusalem, IPR2013-00218, Paper 35 (April 7, 2014) and IPR2013-00219, Paper 41 (April 7, 2014), the patent owner sought an early ruling whether the petitioner;s response and expert declaration should be excluded for improperly raising new issues.  The Board did not want to engage on the matter, however, noting that a ruling on the evidentiary objection at this stage is premature.  Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b), is left to theultimate determination of the Board,, which it will address in final written decision.

 

April 7, 2014

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New Filings

Digital Empire Limited filed IPR2014-00584 challenging claims 1-12 of U.S. Patent No. 7,864,503, assigned to Hilltop Technology LLC.

IBM filed IPR2014-000587 challenging claim 1 of U.S Patent No. 6,826,694, assigned to Intellectual Ventures II LLC.

1000 Petitions!

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As of April 4, 2014, more than 1000 petitions for inter partes review have been filed.  Since the first day, inter partes reviews have taken off with a steady stream of patent challenges:

1000

How have these petitions been disposed of?  About 81% of them are still pending, 11% were not instituted, 4% settled after institution, and 4% have ended in final written decisions.

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Of the 11% (108) Petitions that have not resulted in the institution of trial, 41% (44) were denied on the merits, 23% (25) were denied as time-barred, 31% (33) were settled, and 4% (4) were abandoned by the patent owner.

108