Monthly Archives: April 2014

Motions to Strike Aren’t Necessary (or Are They)?

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In Apple Inc. v. SightSound Technologies LLC, CBM2013-00023, Paper 61 (April 2, 2014) the Board denied patent owner’s request for permission to file a motio to strike the Petitioner’s reply for new arguments not responsive to the arguments the patent owner made in its response, and to strike portions of Petitioner’s declaration for improperly containing legal argument.  In both instances, the Board said that in most cases it is capable of identifying and exclusing improper arguments and testimony.  However, merely asking for permision probably sensitized the Board to the issue.

 

April 4, 2014

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New Filings

Microsoft Corporation filed IPR2014-00574 and IRP2014-00575 challenging U.S. Patent No. 6,151,604 assigned to LJM Software, Inc., and IPR2014-00576 and IPR2014-00577 challenging U.S. Patent No. 6,163,775 assigned to LJM Software, Inc.

Terminations of Proceedings

in Cannon, Inc. v. Yama Capital, LLC, IPR2014-00015, Paper 17 (April 4, 2014), the Board terminated the proceedings prior to a decision to institute, because of a settlement between the parties.

April 3, 2014

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New Filings

Nelson Products, Inc, filed IPR2014-00572 challenging U.S. Patent No. 8,297,662, and IPR challenging U.S. Patent No. 8,297,662, and IPR2014-00573 challenging U.S. Patent No. 8,375,543.

Termination Decisions

In GTech Corporation v. SHFL Entertainment, Inc., CBM2014-00048, Paper 20 and CBM2104-00049, Paper 23 (April 3, 2014), the Board terminated the Proceedings in view of the parties settlement, noting that a trial had not even been instituted.

 

 

Keeping Other People’s Secrets: Motions to Seal

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In Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00347, Paper 32, IPR 2013-00340, Paper 34 (April 3, 2014), the Board instructed the parties two try again to resolve their issues before it ruled on their motions to seal.  The Board remindered the parties that determining a motion to seal involves striking a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information. See Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). A proper Motion to Seal must address the public’s interest in that regard, and should not end with merely establishing that the information sought to be sealed is confidential business information.

Tag Team

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Neste Oil Oyj v. Syntroleum Corporation, IPR2013-00578, Paper 13 (April 3, 2014), is notable because of the peculiar circumstance.  The Board held the initial hearing in the case in person, at the final hearing of an inter partes review between the same parties.

Additional Discovery is Still Hard to Come By

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GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00051, paper 17 (April 3, 2014, the Board authorized Patent Owner to file a motion for additional discovery, directed solely to the real parties in interest in the instant proceedings, no later than April 7, 2014.  The Board cautioned the patent owner that a motion for additional discovery is unlikely to be granted if it is unduly broad and is written in the style of a district court litigation request for “all documents in the possession, custody, or control of GEA that discuss, refer to or relate to . . . .” Such a request is unlikely to be found sufficiently narrowly tailored under the factors considered in deciding whether discovery is “necessary in the interest of justice.”  The Board directed the patent owner to Garmin Int’l, Inc. et. al. v. Cuozzo Speed Techs. LLS, IPR2012-00001; (“Decision on Motion for Additional Discovery”) (Paper 26); Apple Publishing v.Achates Reference , Inc., IPR2013-00080 (Paper 18); Broadcom Corp. v. Telefonaktiebolaget LM Ericsson, IPR2013-00601 (Paper 23); Nichia Corp. v. Emcore Corp. , IPR2012-00005 (Paper 19).

The Board said that the motion should address what evidence shows that petitioner and the identified entities have discoverable evidence that is relevant to determining whether any of those entities are real parties in interest of Petitioner who have been served with a complaint for patent infringement such that a section 315(b) bar would apply.

The Merciful Board

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In Motorola Mobility LLC. v Intellectual Venture I LLC, CBM2014-00084, Paper 6 (April 3, 2014), the Board had given Motorola Mobility five days to submit a corrected petition, removing the argument from its claim charts, but Motorola Mobility missed the date.  The Board granted Motorola additional time, noting that since the correction simply involved removing matter, it would not prejudice the patent owner.

April 1, 2014

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Institution Decisions

In Crocus Technology S.A. v. New York University, IPR2013-00047, Paper 8 (April 1, 2014) the Board instituted a trial as to claims 1-12, 14-20, 22-31, and 33-35 of U.S. Patent No. 6,980,469, but not as to claims 13 and 32.

In Tate & Lyle Americas LLC v. Cargill, Inc., IPR2014-00084 Paper 12, (April 1, 2014) the Board intituted a trial as to claims 1, 2, 4, 6-9, and 11-17 of U.S. Patent No. 8,361,235.

 Trials Terminated

 In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00422 Paper 33, IPR2013-00423, Paper 35(April 1, 2014), the Board terminated the trial because the parties reached a settlement before the patent owner’s response was due.

Mother, May I?

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Mobotix Corp. v. E-Watch Corporation, IPR2013-00335, Paper 30 (April 2, 2014) the Board expunged the patent owner’s motion for leave to file an Amended patent owner response, because the patent owner did not seek leave to file the motion to seek leave.  As the Board has made clear, virtually every motion should be discussed with the Board prior to filing.