On July 5, 2013, Three new IPRs were Filed

On July 5, 2013, Apotex Corp.filed IPR2013-00428 on U.S. Patent No. 8268299 on Self Preserved Aqueous Pharmaceutical Compositions; IPR2013-00429 on U.S. Patent No. 8323630 on Self Preserved Aqueous Pharmaceutical Compositions; and IPR2013-00430 on U.S. Patent No. 8388941 on Self Preserved Aqueous Pharmaceutical Compositions.

On July 3, 2013, Three New IPR were Filed, Including One a Against a Reissued Patent; Board Deals with Idle Free Fallout; and the Board Clarifies that all Agreements Must be Disclosed to Terminate an IPR

On July 3, 2013, Moore Rod & Pipe, LLC filed IPR2013-00418 against U.S. Patent No. RE36362 on Polymer Liners in Rod Pumping Wells; Sony Corporation filed IPR2013-00326 against U.S. Patent No. 6,665,003 on System and Method for Generating and Displaying Panoramic Images and Movies, and IPR2013-00327 against U.S. Patent No. 7,477,284 on System and Method for Capturing and Viewing Stereoscopic Panoramic Images.

In Nichia Corp. v. Emcore Corp., IPR2012-00005 (JYC), Paper 30 (July 3, 2013), the Board denied Emcore’s motion to file a second motion to amend in view of Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB, Jun. 11, 2013).  The Board indicated that Emcore was free to argue that the Idle Free Systems decision should not be applied literally to its motion to amend, as it did not have the benefit of the guidance set forth in that decision before filing its motion to amend.

In Hyundai Motor America, Inc., v. Clear with Computers, LLC, IPR2013-00104, Paper 16, and IPR2013-00176, Paper 17 (July 23, 2013), before terminating the two IPRs broughat against U.S. Patent No. 8,121,904 the Board required the parties 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 sue, confidentiality agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the IPR Proceedings.  The Board also required the Patent Owner to indicate whether there were any other pending infringement suits involving the patent.  In contrast the same day, the Board granted a motion to terminate in CBS Interactive, Inc. v. Helfrich Patent Licensing, LLC, IPR2013-00033 (JYC), Paper 60 (July 3, 2013), where the parties submitted their settlement agreement, and moved pursuant to 37 C.F.R. § 42.74(c), that the settlement agreement be treated as business confidential information and be kept separate from the files of the patent.

On July 2, 2013, One New IPR Filed; Board Approves Non-Electronic Filing of Exhibit

On July 2, 2013,  General Growth Properties, Inc., filed IPR2013-00400 on U.S. Patent No. 6,397,143 on Layout Based Method for Map Navigation.

In McClinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR2013-00231 (SCM), Paper 13, (July 2, 2013) The Board allowed Petitioner to submit a video that it was unable to upload using the electronic system.

On July 1, 2013, Nine New IPRs were filed.

Apple Inc . filed IPR2013-00393 and IPR2013-00394 on U.S. Patent No. 7,418,504 on Agile Network Protocol for Secure Communications Using Secure Domain Names; Apple Inc  filed IPR2013-00397 and IPR2013-00398 on U.S. Patent No. 7,921,211 on Agile Network Protocol for Secure Communications Using Secure Domain Names; Federal Reserve Bank of Boston filed IPR2013-00406 on U.S. Patent No. 5,936,541, on Method for Securing Information Relevant to a Transaction and IPR2013-00409 on U.S. Patent No. 5,793,302 on Method for Securing Information Relevant to a Transaction; Permobil, Inc., filed IPR2013-00407 on U.S. Patent No. 8,408,598 on Anti-tip System for a Power Wheelchair, and filed IPR2013-00411 on U.S. Patent No. 8,408,343; Hitachi Cable America Inc., filed IPR2013-00408 on U.S. Patent No. 5,563,377 Telecommunications Cable.

June 23, 2013, Four New IPR’s Filed

On June 23, 2013, New Bay Capital, LLC filed IPR 2013-00375 on U.S. Patent No. 6,502,135, on Agile Network Protocol for Secure Communications with Assured System Availability; IPR 2013-00376 on U.S. Patent No. 7,490,151 on Establishment of a Secure Communication Link Based on a Domain Name Service (DNS) Request; IPR 2013-00377 on U.S. Patent No. 7,418,504 on Agile Network Protocol for Secure Communications using Secure Domain Names; and IPR 2013-000378 on U.S. Patent No. 7,921,211 on Agile Network Protocol for Secure Communications using Secure Domain Names.

June 21, 2013, Four New IPRs Filed

On June 21, 2013 Aisin Seiki Co., Ltd. filed IPR2013-00380 on U.S. Patent No. 7,413,048 on Weight Measuring Systems and Methods for Vehicles; IPR2013-00382  on U.S. Patent No. 7,976,060 on Seat Load or Displacement Measuring System for Occupant Restraint System Control; and IPR2013-00383 on U.S. Patent No. 8,235,416 on Arrangement for Sensing Weight of an Occupying Item in a Vehicular Seat.  Taiwan Semiconductor Manufacturing Company filed IPR2013-00381 on U.S. Patent No. 7,485,968 on 3D IC Method and Device.

June 10, 2013, Seven New IPR’s Filed; including the 300th IPR

Corning Gilbert Inc. filed IPR2013-00342 and IPR2013-00340 on U.S. Patent No. 8323060 on Coaxial Cable Connector having Electrical Continuity Member; IPR2013-00343 and IPR2013-00345 on U.S. Patent No. 8313353 on Coaxial Cable Connector having Electrical Continuity Member; and IPR2013-00346 and IPR2013-00347 on U.S. Patent No. 8287320 Coaxial Cable Connector having Electrical Continuity Member; Infinera Corporation filed IPR2013-00339 on 6888661 on Square Filter Function Tunable Optical Devices.

June 10, 2013, Court Declines to Stay Litigation Before Claim Construction

In National Oil Well Varco, LP v Omron Oilfield & Marine, Inc., A-12-CA-77-SS (W.D. Texas June 10, 2013), Judge Sam Sparks of the Western District of Texas denied without prejudice defendant’s motion to stay the litigation pending the resolution of an Inter Partes Review defendant filed challenging the patent in suit.  The Court noted that the parties had largely completed their Markman briefing when defendant “opened up a second front” in its legal battle by filing a petition for Inter Partes Review.  Judge Sparks noted that it woudl be at least five months before the court would know whether an Inter Partes Review had even been declarated, and possibly two years before it was completed.  The Court concluded that it would be a waste of judicial resources to stay the case when the matter is so close to issuance of a Markman order, noting at least one other court that denied a stay in a similar situation.  Universal Elecs., Inc., v Universal Remote Control, Inc., SACV 12-00329 AG, 2013 WL 1876459, at *1 (C.D. Cal. May 2, 2013).  The Court noted taht given other aspects of this case, such as non-Markman discovery having not yet proceeded, a stay might be well taken after a Markman orider has issued, and denied the Motion without prejudice.