Monthly Archives: October 2014

October 31, 2014

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New Filings

Nestle USA, Ind., filed IPR2015-00195 challenging U.S. Pat. 6,475,435 assigned to Stork Food & Dairy Systems, B.V.TORK FOOD & DAIRY SYSTEMS B.V.

LG Electronics, Inc. filed IPR2015-00196 challenging U.S. Patent 6,131,121 assigned to Straight Path IP Group, Inc.

Shinn Fu Company of America, Inc. filed IPR2015-000199 challenging U.S. Patent No. 6,604,610 assigned to the Tire Hanger Corporation.

 

 

October 30, 2014

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New Filings

Apple, Inc., filed IPR2015-00185, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00186, challenging U.S. Patent No. 7,921,211, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00187, challenging U.S. Patent No. 7,490,151, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00188, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.

Apple, Inc., filed IPR2015-00189, challenging U.S. Patent No. 7,418,504, assigned to Virtnex, Inc.

Institution Decisions

In Google Inc. v. Personalweb Technologies, LLC, IPR2014-00977, Paper 11, IPR2014-00978, Paper 11, IPR2014-00979, Paper 10, IPR2014-00980, Paper 10 (October 30, 2014) the Board denied Google’s motion to join a previously instituted inter partes review because Google did not file its motion for joinder within one month after it instituted an inter partes review in the earlier proceeding, as required by 37 C.F.R. § 42.122(b).

In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00124, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.

In E*TRADE Financial Corporation v. Droplets, Inc., CBM2014-00125, Paper 15 (October 30, 2014), the Board denied covered business method review of claims 1-25 (all of the challenged claims) U.S. Patent No. 8,402,115.

Dispositions

In Netflix, Inc. v. Straight Path IP Group, Inc., IPR2014-01241 (October 30, 2014), the Board granted the parties joint motion to terminate.

In Vonage Holdings Corporation, et al., v. Straight Path IP Group, Inc., IPR2014-01223, IPR2014-01224, IPR2014-01225, IPR2014-01234, IPR2014-01241(October 30, 2014), the Board granted the parties’ joint motion to terminate.

In Novelty, Inc. v. Magna-Mug LLC, IPR2014-01171, Paper 17 (October 30, 2014), the Board granted the parties’ joint motion to terminate.

Decisions on Rehearing

In Baxter Healthcare Corp. v. Millenium Biologix, LLC, IPR2013-00582, Paper 39, IPR2013-00590, Paper 40 (October 30, 2014) the Board denied rehearing  of its decision that Petitioner’s Reply evidence, would not be considered by the Board in rendering a final written decision.

In Safeway, Inc., v. Kroy IP Holdings, LLC, IPR2014-00685, Paper 13, the Board denied rehearing of its decision not to institute inter partes review of claims claims 1 and 19–25 of US Patent No. 7,054,830.

 

 

 

 

 

 

No Placeholders Needed

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Within a month of the Board’s decision instituting inter partes review, the Board schedules an initial conference call to discuss any motions that the parties intend on filing, and to discuss the various deadlines. The Board typically requires the parties to submit a list of motions each intends to file, and while the natural inclination of the parties is to list every possible motion, to preserve their right to do so, the Board has said that such place holders are not necessary.  Dominion Dealer Solutions, LLC v. AutoAlert, LLC, IPR2014-00684, Paper 15 (October 29, 2014)( We explained that “place holders” are unnecessary and that we encourage parties not to file lists which contain merely such “place holders.”).

October 29, 2014

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New Filings

Google Inc. filed IPR2015-00179 challenging U.S. Patent No. 8,572,279, assigned to Ex Machina, Inc.

Google Inc. filed IPR2015-00180 challenging U.S. Patent No. 8,601,154, assigned to Ex Machina, Inc.

Nest Labs, Inc. filed IPR2015-00181 challenging U.S. Patent No. 8,571,518, assigned to Allure Energy, Inc.

VSR Industries, Inc. filed UPR2015-00181 challenging U.S. Patent No. 6,860,814 assigned to Cole Kepro International LLC.

Institution Decisions

In Phigenix, Inc. v. ImmunoGen, Inc., IPR2014-00676, Paper 11 (October 29, 2014), the Board instituted inter partes review of claims 1-8 (all of the challenged claims) of U.S. Patent No. 8,337,856.

In C&D Zodiac, Inc. v. BE Intellectual Property, Inc., IPR2014-00727, Paper 15 (October 29, 2014), the Board instituted inter partes review of claims 1, 3–10, 12–14, 16–22, 24–31, and 33–38 (all the challenged claims) of U.S. Patent No. 8,590,838.

In DealerSocket, Inc. v.  AutoAlert, LLC, CBM2014-00132, Paper 11, The Board instituted covered business method review of claims 1, 3–5, 7, 9–11, and 15 of U.S. Patent No. 8,095,461

Decisions on Rehearing

In McClinton Energy Group L.L.C. v. Magnum Oil Tools International, Ltd., IPR2013-00231, Paper 33 (October 29, 2014) the Board denied patent owner’s request for a rehearing on the grounds that the Final Written Decision relied upon grounds not set forth in the Petition.

Fault-Tolerant System

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For all of its complexities, the inter partes review system can be fairly fault tolerant.  In Debasish Mukhopadhyay v. Veolia Water Solutions & Technology Support, IPR2014-01563, Paper 4 (October 28, 2014), the Board granted the petition a filing date, despite some glaring errors:

  1. Failure to serve petition and all exhibits on the Patent Owner via Express Mail® or by means at least as fast and reliable as Express Mail®. Service may be made electronically upon agreement of the parties. 37 C.F.R. §§ 42.6(e), 42.105.
  2. Incorrect spacing. 37 C.F.R. § 42.6 requires the petition to be double-spaced, with the exception of claim charts. Block quotations may be 1.5 spaced, but must be indented from both the left and right margins. The footnotes at pages 9–10 must be reformatted.
  3. Failure to provide in a claim construction section a statement identifying how disputed or important claim terms are to be construed. See 37 C.F.R. § 42.104(b)(3).
  4. Claim charts should be included in the petition. The rules require that the petition specify where each element of a challenged claim is to be found in the prior art. See 37 C.F.R. § 42.104(b)(4). This information is to be provided pursuant to the page limit and double-spacing requirements. The element-by-element showing may be provided in a claim chart, which counts towards the page limit, but may be single-spaced. See 37 C.F.R. § 42.6(a)(2)(iii). As it circumvents the double-spacing requirement, claim charts may not contain any arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. Submitting the claim chart as an exhibit appears to circumvent the page limit set forth in 37 C.F.R. § 42.24.

While Petitioner will be very busy in the next five business days making the necessary corrections, the Petition goes forward.

 

October 28, 2014

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Institution Decisions

In Unverferth Manufacturing Co., Inc. v. J. & M. Manufacturing Co., Inc., IPR2014-00758, Paper 7 (October 28, 2014), the Board instituted inter partes review of claims 1–14 (all of the challenged claims)of Patent No. US 8,585,343.

In Parrot S.A. v. Drone Technologies, Inc., IPR2014-00732, Paper 8 (October 27, 2014), the Board instituted inter partes review of  claims 1–12 of U.S. Patent No. 8,106,748.

Dispositions

In Oracle Corporation v. Click-to-Call Technologies, Inc., IPR2013-00312, Paper 52 (October 29, 2014), the Board issued a Final Written Opinion that claims 1, 2, 8, 12, 13, 15, 16, 18, 19, 22–24, and 26–30 (all the claims in the proceeding) of U.S. Patent No. 5,818,836 were unpatentable.

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00066, Paper 30 (October 28, 2014), the Board granted the parties’ joint motion to terminate.

In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00266, Paper 73 (October 28, 2014), the Board disposed of the inter partes review by granting the patent owners motion to cancel claims 1, 2, 4, 11, 12, 17, 18, and 19 of U.S. Patent No. 8,158,346 (all of the challenged claims), but denying the patent owners motion to substitute new claims 20-26.

 

 

October 27, 2014

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Institution Decisions

In AVX Corporation v. Greatbatch, Ltd., IPR2014-00697, Paper 13 (October 27, 2014), the Board instituted inter partes review of claims 1, 2, 4, 6, 7, 9, 11, 13–20, 23, 25, and 26 of U.S. Patent No. 5,905,627 (but not as to challenged claims 3, 5, 8, 12, 21, 22, 24, and 27–29).

Dispositions

In Delta Air Lines, Inc. v. Loyalty Conversion Systems Corporation, CBM2014-00095, CBM2014-00096 (October 27, 2014), the Board terminated the covered business method reviews on the joint motion of the parties.

 

 

 

Handling Dependent Claims in a Motion to Amend

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In Google Inc. v. Arendi S.A.R.L., IPR2014-00452, Paper 16 (October 27, 2014), the Board advised the patent owner on addressing dependent claims when an independent claim is amended.  The Board advised the patent owner that that it could propose substitute dependent claims that include the same limitations as the original dependent claims 2–79 but depend from proposed substitute new independent claim, and that if these claims are the same as the original claims except that they depend from a proposed substitute independent claim, the patent owner can list the proposed substitute dependent claims in a claims appendix, which would not count toward the fifteen page limit for motions to amend.

 

October 24, 2014

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New Filings

Agila Specialties Inc., filed IPR2015-00144, challenging U.S. Patent No. 8, 058,238 owned by the Royal Bank of Canada.

Institution Decisions

In McWane, Inc. v. Waugh, IPR2014-00777, Paper 8 (October 24, 2014) the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 8,567,155.

 

 

Institution Decision

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 3–7, 18–20, 31, 32, 36, 40, 41, 44, and 45 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In The Gillette Company v. Zond LLC, IPR2014-00991, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 1, 2, 8, 10–13, 15–17, 22–25, 27–30, 33, 34, 38, 39, 42, 43, and 46–48 (all of the challenged claims) of U.S. Patent No. 7,811,421 B2 (“the ’421 patent”).

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board instituted inter partes review of claims 9, 14, 21, 26, 35, and 37 (all of the challenged claims) of U.S. Patent No. 7,811,421.

In Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00890, Paper 10 (October 24, 2014). the Board instituted inter partes review of claims 1, 2, and 4–17 of US Patent No. 7,265,792, but not claims 3, 26, and 27.

Termination

In RPC Formatec GmbH v. Trudell Medical International, IPR2014-01040, Paper 10 (October 24, 2014), the Board terminated the proceeding before institution on the joint motion of the parties.

Joinder

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00805.

In The Gillette Company v. Zond LLC, IPR2014-00990, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00800.

In The Gillette Company v. Zond LLC, IPR2014-00992, Paper 13 (October 24, 2014), the Board joined the proceeding with prior filed IPR2014-00802.

Rehearing Decisions

In Samsung Electronics v Rembrandt Wireless Technologies, LP, IPR2014-00514, Paper 20, IPR2014-00515, Paper 20  (October 24, 2014) the Board denied rehearing of its decision not to institute inter partes review of U.S. Patent No. 8,023,580.

 

 

 

 

October 23, 2014

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Institution Decision

In Mercedes-Benz USA, LLC v. American Vehicular Sciences LLC, IPR2014-00647, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 10, 11, 15, 16, 17, 19, 20, and 23 of U.S. Patent No. 5,745,000.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 12 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 (all of the challenged claims) of U.S. Patent No. 6,853,142.

In  IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00668, Paper 8 (October 23, 2014), the Board instituted inter partes review of claims 1–6, 11, 12, 14–17, and 21–27 of U.S. Patent No. 6,840,576, but not challenged claim 28.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 11 (October 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 12 (October 23, 2014) the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In DealerSocket, Inc. v. AutoAlert, LLC, CBM2014-00139, Paper 12 (October 23, 2014), the Board instituted a covered business method review of claims 1 and 3–7 of U.S. Patent No. 8,396,791.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 21, 24, 26–28, 31, 32, 37, and 38 of U.S. Patent No. 6,853,142.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 1, 3–10, 12, 15, 17–20, and 42 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 22, 23, 25, 29, 30, 33–36, 39, and 43 of U.S. Patent No. 6,853,142.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 11 (October 23, 2014), the Board instituted inter partes review of claims 2, 11, 13, 14, and 16 of U.S. Patent No. 6,853,142.

In Eli Lilly and Company v. Los Angeles BioMedical Research Institute at Harbor-UCLA Medical Center, IPR2014-00693, Paper 14, (October 23, 2014), the Board instituted inter partes review of claims 1–5 of US 8,133,903.

Dispositions

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 1–18 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00277, Paper 42 (October 23, 2014), the Board issued a Final Written Decision finding that claims 19–30 of U.S. Patent No. 8,318,430 were not shown to be unpatentable.

In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290, Paper 46 (October 23, 2014).

Joinder

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01046, Paper 13 (October 23, 2014) the Board joined the proceeding with IPR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01013, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01014, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00819.

In Advanced Micro Devices, Inc. v. ZOND LLC, IPR2014-01075, Paper 12 (October 2014), the Board joined the proceeding with IPR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01063, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00818.

In Renesas Electronics Corporation v. ZOND LLC, IPR2014-01057, Paper 13 (October 23, 2014) the Board joined the proceeding with PR2014-00821.

In The Gillette Company v. ZOND LLC, IPR2014-01015, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00867, Paper 13 (October 23, 2014), the Board joined the proceeding with PR2014-00819.

In The Gillette Company v. ZOND LLC, IPR2014-01012, Paper 13 (October 23, 2014), the Board joined the proceeding with IPR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00866, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00818.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00865, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00827.

In Fujitsu Semiconductor Limited v. Zond, LLC,  IPR2014-00863, Paper 12 (October 23, 2014), the Board joined the proceeding with PR2014-00821.