Institution Decisions

In Seagate Technology (US) Holdings, Inc. v. Enova Technology Corp., IPR2014-00683, Paper 10, (October 2, 2014), the Board instituted inter partes review of claims 1–15 of U.S. Patent No. 7,136,995.

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00845, Paper 13, (October 2, 2014), the Board instituted inter partes review of claims 20, 21, 34–36, 38, 39, 47, and 49 of U.S. Patent No.7,147,759 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00850, Paper 11, (October 2, 2014), the Board instituted inter partes review of claims 22–33, 37, 46, 48, and 50 of U.S. Patent No. 7,147,759 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00855, Paper 11, (October 2, 2014), the Board instituted inter partes review of claims 1–5 and 11–15 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 12, (October 2, 2014), the Board instituted inter partes review of 6–10 and 16–20 of U.S. Patent No. 7,808,184 (all of the challenged claims).

In Samsung Electronics Co., Ltd. v.  Arendi S.A.R.L., IPR2014-001142, Paper 11 (October 2, 2014), the Board denied inter partes review as barred under 35 USC 315(b), and denied joinder with a prior filed IPR would would have eliminated the 315(b) bar.

Final Written Decisions

In Moore Rod & Pipe, LLC v. Wagon Trail Ventures, Inc., IPR2013-00418, Paper 38 (October 2, 2014), the Board issued a Final Written Decision that claims 1-20 of U.S. Patent No. RE36,362 are unpatentable.

In B/E Aerospace, Inc. v. MAG Aerospace Industries, LLC, IPR2014-01510, Paper 3, IPR2014-01511, Paper 3, IPR2014-01513, Paper 3, (October 2, 2014), the Board granted the Petition a filing date, but noted the improper usages of claim charts, and give the petitioner five days to make corrections.  In particular, the Board noted phrases such as “It would be obvious…” and “alternatively have been obvious…” as improperly drifting into argument.

In Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00858, Paper 13 (October 2, 2014), the Board granted Fujitsu’s motion to join the proceeding with prior IPR2014-00803.

The Board noted that the Leahy-Smith America Invents Act permits joinder of like review proceedings, and said that acting on behalf of the Director, it has the discretion to join an inter partes review with another inter partes review, citing. 35 U.S.C. § 315.  The Board said that joinder may be authorized when warranted, but the decision to grant joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. When exercising its discretion, the Board is mindful that patent trial regulations, including the rules for joinder, must be construed to secure the just, speedy, and inexpensive resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The Board considers the impact of both substantive issues and procedural matters on the proceedings.

The moving party bears the burden to show that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b). In the instant case, Fujitsu argued that joinder was appropriate because: (1) it is the most expedient way to secure the just, speedy, and inexpensive resolution of the related proceedings; (2) The petition are substantively identical; (3) Fujitsu agreed to consolidate filings and discovery; (4) joinder would not affect the schedule; (5) joinder would streamline the proceedings, reduce the costs and burdens on the parties, and increase efficiencies for the Board without any prejudice to patent owner.

In Samsung Electronics Co., Ltd. v. Arendi S.A.R.L., IPR2014-01142, Paper 11 (October 2, 2014), decided the same day the Board denied joinder which would have saved the Petition from being barred under 35 USC 315(b), noting:

• Petitioner did not specify the differences between its petition and the prior petition.
• Petitioner did not indicate what it meant by “substantially” identical claim charts.
• Petitioner added testimony from a new witness, introducing arguments that are not present in the prior petition.
• Petitioner does not suggest any specific changes to the schedule in the prior proceeding, simply alleging “there appears to be no discernable impact on the trial schedule.”
•  Petitioner did not set forth how briefing and discovery may be simplified, other than suggesting that it have seven additional pages for papers filed.
• Petitioner submitted no evidence that the other petitioner has agreed to, or will, “work together” with Petitioner “to manage the questioning at depositions, and presentations at the hearing, to manage within the time normally allotted, and to avoid redundancy.”

The Board concluded that in view of the facts and circumstances of this case, Petitioner, as movant, has not met its burden to show why joinder is appropriate, consistent with the goal of securing the just, speedy, and inexpensive resolution of every proceeding.