In ACCO Brands Corporation v. Fellowes, Inc., IPR2013-00566, Paper 21 (May 30, 2014), the Board resolved how to handle the filign of a redacted transcript. The Board diecided that the party wantign the redcations should file the transcript, and while the party takign the deposition should file the Exhibits, so that are correctly numbered.
Monthly Archives: May 2014
Live On Stage!
In K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 36 (May 30, 2014), the Board reconsidered and modified its previous order allowing live testimony of the inventor. On the patent owner’s motion, the Board previous ordered that the inventor live testimony would be received, consisting of 30 minutes of cross-examination by petitioner, followed by 30 minutes of redirect by patent owner. The petitoner objected to this arrangement, arguing that it had nothing new to ask the inventor. The Board rearraged the hearing so that the patent owner was allowed up to 30 minutes of direct testimony, followed by up to 30 minutes of cross examination by petitioner, with the Petitioner being entitled to use ot to 30 minutes of video recording of Mr, Orr’s deposition testimony.
While it is encouraging to see the Board allow for alternative hearing formats,the value os such live testimony is dubious, since the direct testimony “will be strictly limited to his declaration testimony,” and it puts petition in a awkward position of having to desigate cross examination testimiony in advnace of the direct testimony. It wil be interesting to see how the June 17, 2014, final hearing goes.
May 30, 2014
Institution Decisions
First Quality Baby Products, LLC v. Kimberly-Clark Worldwide, Inc., IPR2014-00169, Paper 8, (May 30, 2014), the Board instituted inter partes review of claims 15-22 (all of the challenged claims) of U.S. Patent No. 8,579,876.
Dispositions
comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 20 (May 30, 2014), the Board granted the parties joint motion to terminate the inter partes review.
Claim Charts May Contain a Concise Summary fo the Disclosure of a Reference
Ericcson, Inc.v. Intellectual Ventures I LLC, IPR2014-00527 May 30, 2014), the Patent Owner charged that petitioner’s claim charts contained impermissible argument. The Board disagreed, explaining that it was permissible to summarize the relevant disclosure of a reference:
We do not discern, however, that the claim charts include content that is prohibited. Although quotations from a prior art reference are permitted, and, in many cases, may be preferable, Board rules do not mandate such quotation to the exclusion of other qualified indications of how the prior art teaches the limitations of a claim. To that end, there is no prohibition on the use of a concise summary of the disclosure of a reference as an alternative to quotation from the reference in an element-by-element showing. That Ericsson’s claim charts include summary of the disclosure of the involved references beyond strict quotation does not, in our view, present improper content in the claim charts. We also do not discern that, in this case, the brief introductory or expository phrases that precede expression of the disclosure of a reference in connection with a claim element rise to the level of “argument” that must be excluded from a claim chart.
Board Continues to Defer Decisions on Motion to Strike
In Distinctive Developments, Ltd. Uniloc USA, Inc., IPR2013-00391, Paper 26, (May 29, 2014), the Board denied patent owner a motion to strike the petitioner’s reply as exceeding its proper scope, explaining that the propriety of the reply would be considered by the Board.
May 29, 2014
Institution Decisions
Pentair Ltd. v. Hayward Industries, Inc., IPR2014-00187, No. 11 (May 29, 2014). the Board instituted inter partes review of claims 1, 2, and 9 of U.S. Patent No. 8,281,425
Valeo, Inc. v. Magna Electronics Inc., IPR2014-00220, Paper 18 (May 29, 2014) the Board instituted inter partes review of claims 1-5, 7-13, 15-20, 25-32, 39-42, 47, and 48 of U.S. Patent No. 7,859,565, but not claims 6, 14, 21-24, 33-28, 43-46, and 49.
Valeo, Inc. v. Magna Electronics Inc., IPR2014-00221, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 6, 8-10, 13-15, 27, 29-31, 36, 38, 39, 41-43, and 47-50 of U.S. Patent No. 7,991,522, but not claims 2-5, 7, 11-12, 16-26, 28, 32-35, 37, 40, and 44-46.
Valeo, Inc. v. Magna Electronics Inc., IPR2014-00222, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 1, 3, 6, 8-11, 14-16, 18-29, 31, 32, 34, 36-41, 44, 46, and 48-50 of U.S. Patent No. 8,386,114, but not claims 2, 12-13, 17, 33. 35, 45, 47, 53-55, and 59.
Valeo, Inc. v. Magna Electronics Inc., IPR2014-00227, Paper 13 (May 29, 2014) the Board instituted inter partes review of claims 19 and 25-27, but not claims 1-18 and 20-24 of U.S. Patent No. 7,877,175, consolidating the proceeding and IPR2013-00228 between the same parties and involving the same patent.
May 28, 2014
Trials Instituted
Foursquare Labs, Inc. v. Silver State Intellectual Technologies, Inc., IPR2014-00159, Paper 6 (May 28, 2014) the Board instituted inter partes review of claim 1, but not challenged claims 2-5 and 7-9, of U.S. Patent No. 7,343,165.
Trials Denied
Naughty Dog, Inc. v. McRo, Inc., IPR2014-00198, Paper 9, 05/28/2014 the Board denied inter partes review of claims 1-26 of U.S. Patent No. 6,307,576.
Dot Your I’s, Cross Your T’s, Measure Your Font, Count Your Line Spacing
Dynamic Drinkware, LLC v. National Graphics, Inc., IPR2013-00131, Paper 32 (May 2, 2014), the Board expunged the petitioner’s papers that did not comply with Rule 42.6 (37 C.F.R. § 42.6), including by using a 12-point proportional font instead of the 14-point font required by the rule, using an even smaller font in the foot notes, and single spacing (rather than 1.5 line spacing) block quotes. The Board did give the petitioner five days to submit corrected papers, however,
PRPS ate my Petition
Oracle Corporation v. MAZ Encryption Technologies LLC, IPR 2014-000472 (May 1, 2014), the Board granted petitioner’s request for a March 1 filing date because a PRPS system outage prevented petitioner from completing the filing until March 3.
May 1, 2014
Institution Decisions
Trulia, Inc. v. Zillow Inc., CBM2014-00115, Paper 8 (May 1, 2014), the Board instituted a covered business method review of claims 2, 5, 15-24, and 40 of U.S. Patent 7,970,674, but not as to claim 25.
Terminations
Voltage Security, Inc. v. Protegrity Corporation, CBM2014-00024, Paper 17 (May 1, 2014), the Board terminated the covered business method review on the joint motion of the parties.
Final Written Decisions
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00052, Paper 88 (May 1, 2014), the Board cancelled claims 11-23 and 26-31 of U.S. Patent No. 7,276,543, but found that claims challenged claims 24, 25, and 32-34 were not invalid.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00051, Paper 81 (May 1, 2014), the Board cancelled claims 1-9 of U.S. Patent No. 6,110,593, and denied the Patent Owner’s motion to amend.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00053, Paper 66 (May 1, 2014), the Board cancelled claims 35, 39, 44, and 53-57 of U.S. Patent No. 7,276,543, but found that 36-38, 40-43, and 45-52 were not invalid.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00050, Paper 77 (May 1, 2014), the Board cancelled claims 1-19 of U.S. Patent No. 6,323,255, and denied patent owner’s motion to amend.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00047, Paper 84 (May 1, 2014), the Board found that claims 1-14 (all the claims) of U.S. Patent No. 6,438,306 were not invalid.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00044, Paper 92 (May 1, 2014), the Board found that claims 1-22 (all of the claims) of U.S. Patent No. 6,961,508 were not invalid.
Corning Incorporated v. DSM IP Assets B.V., IPR2013-00043, Paper 95 (May 1, 2014), the Board found that claims 1-18 (all of the claims) of U.S. Patent No. 7,171,103 were not invalid.
St. Jude Medical, Inc. v. The Regents of the University of Michigan,IPR2013-00041, Paper 69 (May 1, 2014), the Board cancelled claims 23 and 25-29 (all of the challenged claims) of U.S. Patent No. 5,746,775.