In Schott Gemtron Corporation v. SSW Holdings Company, Inc., IPR2014-00367, Paper 20 (August 13, 2014), the Board denied patent owner’s motion for additional discovery relating to commercial success.  The Board noted the legislative history of the AIA makes clear that additional discovery should be confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case,” and as the justification for being conservative in authorizing additional discovery.

The Board found the patent owner had not met its burden to demonstrate that discovery of the requested financial information is necessary in the interest of justice, failing to show that the sales level of Petitioner’s constituted commerical success, and a nexus between the claimed inventions and any commercial success of Petitioner’s products. While a conclusive showing of either is not necessary at this stage, some evidence is needed to establish that there is more than a mere possibility that Patent Owner’s request would uncover something useful.

About the nexus the Board said that a patent owner must offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.” Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”).

SCHOTT Gemtron Corporation

SSW Holdings Company, Inc. of

New Filings

CaptionCall, LLC filed IPR 2014-01287 challenging U.S. Patent No. 7,660,398 assigned to Ultratec, Inc.

Aruze Gaming Macau, Ltd. filed IPR2014-01288 challengnig U.S. Patent No. 7,892,088 assigned to MGT Gaming, Inc.

Institution Decisions

In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00489, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 22-25, 36-50, and 66-123 (“the challenged claims”) of U.S. Patent No. 5,910,988..

In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00490, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 1, 2, 9, 11-27, 29-32, 34-46, 48-52, 54-58, 60-64, 66, and 67 (“the challenged claims”) of U.S. Patent No. 6,032,137.

In Fidelity National Information Services Inc. v. Datatreasure Corp., IPR2014-00491, Paper 9 (August 13, 2014), the Board denied inter partes review of claims 1, 2, 9, 11-21, 26, 27, 29-32, 34, 35, 51-53, 55-62, 64, and 65 (the challenged claims) of U.S. Patent No. 5,910,988.

In Macronix International Co., Ltd. v. Spansion LLC, IPR2014-00898, Paper 13 (August 13, 2014), the Board instituted inter partes review of claims 7 and 14 of U.S. Patent No. 7,151,027.

Rehearings

In TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00265 , Paper 17 (August 13, 2014), the Board denied rehearing of its decision declining to institute inter partes review of claims 28–38 of U.S. Patent No. 8,222,588.

In eBay Inc. v. Lockwood, CBM2014-00025, Paper 34, CBM2014-00026, Paper 35  (August 12, 2014) the Board denied eBay’s motion to expunge the declaration of its expert, directed to unpatenability of the prior art, which eBay claimed was unnecessary since the Board only instituted the proceeding on indefiniteness.  The patent owner objected because the expert “construed the claims and applied the cited art from the perspective of a person of skill in the art (‘POSA’), demonstrating that a POSA would understand the [metes] and bounds of the claims.”

While parties are permitted to take inconsistent positions, as a practical matter it can sometimes backfire.

In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 10 (August 12, 2014), the Board reminded the parties that any agreement or understanding between the patent owner and the petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of the proceeding shall be in writing, and a true copy of that agreement or understanding shall be filed in the Office. 35 U.S.C. § 327(b). The Board added that in order to ensure compliance with 35 U.S.C. § 327(b), and based on the facts of this proceeding, the parties are required to certify in writing that there are no other written or oral agreements or understandings, including any collateral agreements, between them, including but not limited to licenses, covenants not to sue, confidentiality agreements, payment agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the instant proceeding. To the extent that there are other agreements as outlined immediately above, the parties shall file such agreements and may request that any such agreement be treated as business confidential information and be kept separate from the files of the involved patent. 37 C.F.R. § 42.74(c).

In Micro Motion, Inc. v. Invensys System, Inc., IPR2014-00179, Paper 22, IPR2014-00167, Page 24  (August 11, 2014), the Board informed the patent owner that it must address each proposed substitute independent claim in the Motion to Amend, itself, but that it may provide a claim listing that includes proposed substitute dependent claims that only are amended to depend from each new, substitute independent claim. The Board indicated that such a claim listing does not count towards the fifteen page limit for a Motion to Amend.

New Filings

Sony Online Entertainment LLC filed IPR2014-01232 challenging U.S. Patent No. 6,306,035, assigned to Agincourt Gaming LLC.

Sony Online Entertainment LLC filed IPR2014-01255 challenging U.S. Patent No. 8,454,432, assigned to Agincourt Gaming LLC.

Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,311,037.

Hamilton Beach Brands, Inc. filed UPR2014-01257 challenging U.S. Patent No. 7,770,512, assigned to Courtesy Products, Inc.

Initiative for Responsibility in Drug Pricing LLC filedIPR2014-01259 challenging U.S. Patent No. 7,879,828, assigned to Wyeth LLC.

Hamilton Beach Brands, Inc. filed UPR2014-01260 challenging U.S. Patent No. 7,258,884.

Institution Decisions

In ButamaxTM Advanced Biofuels LLC v. GEVO, Inc., IPR2014-00402, Paper 11 (August 8, 2014), the Board instituted inter partes review of claims 1-15 of U.S. Patent No. 8,373,012.

In Toshiba Corporation v. Intellectual Ventures II LLC, IPR2014-00418, Paper 7 (August 8, 2014), the Board instituted inter partes review of claims 1–11 and 17–19 (all of the challenged claims) of U.S. Patent No. 5,500,819. 

Dispositions

In Branch Banking and Trust Company v. EMG Technology, LLC, CBM2014-00094, Paper 9, CBM2014-00145, Paper 8, (August 8, 2014) the Board terminated the proceeding before initiaton of a covered business method review of U.S. Patent No. 7,441,196 on the joint motion of the parties.

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00415, Pape 51, IPR2013-00416, Paper 35, IPR2013-00417, Paper 62 (August 7, 2014), the patent owner submitted a notice of withdrawal of motion to amend “without prejudice” to pursue the same claims in another application or proceeding.  The Board explained that the paper was more than merely a notice of withdrawal of its Motion to Amend, because it specified the desired effect or consequence of the withdrawal. The Board treated the Notice as a motion, which pursuant to 37 C.F.R. § 42.20(b), cannot be filed without prior authorization from the Board, and ordered it expunged.

In Iron Dome LLC v. Chinook Licensing DE, LLC., IPR2014-00674, Paper 7 (August 7, 2014), the Board treated the patent owners request for an award of its attorney’s fees associated with the proceeding, as “sanctions pursuant to 37 C.F.R. § 42.12″ as an unauthorized motion, and required the patent owner to file a new response.

These are timely reminders that the Board should be consulted before any filing (even one attempting with withdraw a prior filing).