Monthly Archives: June 2014

June 5, 2014

Posted on by

New Petitions

Ford Motor Company filed IPR2014-00884 challenging U.S. Patent No. 7,104,347 assigned to Paice LLC.

HTC Corporation IPR2014-000905 challenging U.S. Patent No. 8,400,926 assigned to Patentmarks Communications, LLC.

Institution Decisions

RPX Corporation v. VirnetX Inc.,  IPR2014-00171, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00172, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00174, Paper 50 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00175, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

RPX Corporation v. VirnetX Inc., IPR2014-00177, Paper 49 (June 5, 2014), the Board denied inter partes review in a confidential decision.

 

Board Tells Parties How to File a Request for Rehearing

Posted on by

Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 98, IPR2013-00044, Paper 96 (June 5, 2014), the Board had difficulty determining what points Corning believed the Board misapprehended or overlooked, and dismissed the request without prejudice.  The Board gave Coring driectino on how to file a request for rehearing:

On page ___ the Final Written Decision states ___. A point that the Decision is believed to have overlooked [or misapprehended] is ___. The point was set forth in ___ Petition [or Reply] _ at page ___. Explain why overlooked or misapprehended point is significant.

A Second Chance on a Motion to Amend

Posted on by

In Microsoft Corporation v. Surfcast, Inc., IPR2013-00292, Paper 77 (June 5, 2014), the PTAB authorized the patent owner to file a corrected motion to correct what it deemed potential ambiguities in the proposed substitute claims filed in its first motion.  The Board further authorized the petitioner to file up to five pages of additional briefing solely as to the changes introfuced by the corrected motion.

 

June 4, 2014

Posted on by

Petions Filed

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00885 challenging U.S. Patent No. 5,922,695 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00886 challenging U.S. Patent No. 5,935,946 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00887 challenging U.S. Patent No. 5,977,809 assigned to Gilead Sciences, Inc.

Mylan Pharmaceuticals Inc..filed a petition IPR2014-00888 challenging U.S. Patent No. 6,043,230 assigned to Gilead Sciences, Inc., IPR2013-00466 (June 4, 2014), the Board terminated the proceeding on the joint motion of the parties.

Institution Decisions

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Paper 11, (June 4, 2014)denied Inter Partes Review of claims 1, 7, 8, 11, 12, 15, 16, and 30-39 of U.S. Patent No. 7,959,635

Termination Decisions

Palo Alto Networks, Inc. v. Juniper Networks, Inc.,

Ikaria, Inc. v. GENO LLC, IPR2013-00253, Paper 28 (June 4, 2014), the Board entered judgment against the patent owner in response to a request by the patent owner.

 

Motion for Discovery Denied as Moot

Posted on by

GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041) Paper 38,  (IPR2014-00043), Paper 37, (IPR2014-00051), Paper 36. (IPR2014-00054), Paper 35, (IPR2014-00055), Paper 29  (June 3, 2014), the Board denied patent owners requet for discovery about the real party in interest in viiew of the Petitioner’s agreement to provide the requiested information.

 

June 3, 2014

Posted on by

New Filings

Excelsior Medical Corporation filed IPR2014-00880 challenging U.S. Patent No. 8,740,864.

Institution Decisions

PNC Bank, N.A. v. Maxim Integrated Products, Inc., CBM2014-00038, Paper 19, CBM2014-00039, Paper 19, CBM2014-00040, Paper 19,  CBM2014-00041, Paper 19 (June 3, 2014) , the PTAB declined to instaitute a covered business method review because one of the petitioners had challenged the validity of the patent before the filing of the petition, and this could not be resolved by that party agreeing to take an adverse judgment.

Amneal Pharmaceuticals, LLC v . Endo Pharmaceuticals Inc.,  IPR2014-00160 (June 3, 2014), the Board instittued trial as to claim 4 of U.S. Patent No. 7,851,482 B2.

 

Rehearing Round Up

Posted on by

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 11  (June 3, 2014) (denying rehearding on refusal to institute trial)

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510, Paper 25 (June 3, 2014) (denying rehearing on refusal to institute trial on certain grounds).

Alcon Research, Ltd. v. Joseph Neev,  IPR2014-00217, Paper 23 (June 2, 2014) (denying rehearing on refusal to institute trial on certain grounds).

GoerTek Electronics, Inc. v. Knowles Electronics, LLC., IPR2013-00523, Paper 26 (May 30, 2014)(denying rehearing on refusal to institute trial on alternative grounds).

 

Demonstrative Exhibits Are Proper If the Quote Filed Papers

Posted on by

In Hewlett-Packard Company v. MCM Portfolio LLC,  IPR2013-00217, Paper 29 (June 3, 2014) the Board discussed Demonstrative Exhibits:

Demonstrative exhibits are merely visual aids to a party’s oral presentation at the final oral hearing, and are not evidence. They may not include new argument or evidence. See CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 118 at 3-4 (Oct. 23, 2013).

Petitioner objected to Patent Owner’s slides 7-11 address Petitioner’s arguments that were not addressed in the patent owner’s response and that Patent Owner will use those slides as a basis to present new arguments at the oral hearing.  Petitioner confirmed that each of Patent Owner’s slides at issue does not contain new argument or evidence, but rather merely quotations from the petition. As such, the Board informed the parties that Patent Owner may use its demonstrative exhibits at the oral hearing.

The Board advised the parties to utilize their oral hearing time efficiently by only presenting arguments relied upon in the substantive papers previously submitted (e.g., the petition and patent owner response). Whatever a party desires to present should already have been presented in the party’s papers.The Board noted that the parties should act with courtesy and decorum at the oral hearing.  See 37 C.F.R. § 42.1(c).