On April 23, 2013, Harland Clarke Holdings Corp. filed CBM2013-00016 on U.S. Patent No. 8,346,637, and Volusion, Inc. filed CBM2013-00017 on U.S. Patent No. 6834282 and CBM2013-00018 against U.S. Patent No. 7426481.
April 26, 2013, One New IPR Filed
On April 26, 2013, Mobotix Corp. filed IPR2013-00255 on U.S. Patent No. 6970183.
Inter Partes Review is Thriving; Covered Business Method Review Not so Much
In roughtly the first six months since the AIA created Inter Partes Review, 189 petitions for Inter Partes Review have been filed:
In contrast only a handfull (17) of covered business method reviews have been filed:
Only Eleven Mistakes?
One of the improvements made by the AIA is the ability to requset Supplemental Examiantion to cure defects in a patent. Since September 2012, only eleven such requests has been filed as illustrated in this graph from the U.S. Patent and Trademark Office:
Preissuance Submissions
The AIA made it easier for third parties to submit prior art relating to pending patent applications through Preissuance Submissions. The AIA expanded the time for making such submissions, guaranteeing third parties at least six motnhs from publication to make the submission (unless the application is allowed sooner), and allowing such submissions until the first substantive Since September 16, 2012, 529 Preissuance Submissions have been made, as illustrated in this graph from the U.S. Patent and Trademark Office.
February 1, 2013, Two New IPRs Filed
On February 1, 2013, Dynamic Drinkware LLC filed IPR2013-00131 on U.S. Patent No. 6,635,196 on Molded Articles Having a Surface Bearing a Lenticular Image. Shaw Industries Group, Inc. filed IPR 2013-00132 on U.S. Patent No. 7,806,360 on Creel Magazine Supply System and Method.
Another Unsuccessful Request for Rehearing
In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 28 (January 29, 2013), the PTAB denied Nissan’s request for a rehearing related to the PTAB’s Order (Paper 24) regarding ex parte contacts. The Board rejected Nissan’s arguments that it was acting on PTAB’s advice, noting that Nissan did not in fact follow the alleged advice. The PTAB further noted that an ex parte contact cannot be made proper simply by requesting a conference call somewhere within the communication. Finally the PTAB rejected the argument that the patent owner likewise acted impropertly, first noting that that did not change the fact that Nissan acted improperly, and that the patent owner’s communications were different in nature.
January 29, 2013, Three New IPRs Filed
On January 29, 2013, Intelligent Bio-Systems, Inc., filed IPR2013-00128 on U.S. Patent No. 7,057,026 on Labelled Nucleotides. Komatsu America Corp. filed IPR2013-00129 and IPR2013-00130 against U.S. Patent No. 7,039,507 on Apparatus for Tracking and Recording Vital Signs and Task-Related Information of a Vehicle to Identiy Operating Patterns. This is another instance where a Petition felt it needed two separate filing against a single patent to get the job done.
Another Warning About Ex Parte Contacts
Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBMR2012-00010, Paper 14 (January 24, 2013) Per 37 CFR 42.5(d), The PTAB again reminded us that all substantive communications with the PTAB must include all parties to the proceeding. A communication that identifies evidence and explains its irrelevance is a substantive communication.
In Search of the Real Party in Interest
In Intellectual Ventures Management LLC v Xilinx, Inc., IPR2012-000018, Paper 12 (January 24, 2013) the PTAB rejected Xilinx argument that Inter Partes Reviews should not be declared in IPR2012-00018 (Patent 7,566,960), IPR2012-00019 (Patent 8,062,968), IPR2012-00020 (Patent 8,058,897), and IPR2012-00023 (Patent 7,994,609), finding that Xilinx has failed to sufficiently demonstrate that IVM has not named all real parties in interest for any of the four proceedings.