About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.

Common Mistakes in Petitions

Attorney Argument in the Claim Charts

In Tissue Transplant Technology Ltd. v.  MiMedx Group, Inc., IPR2015-00320, Paper 6 (December 31, 2014), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections.

In Starbucks Corporation v. Kroy Holdings, LLC, IPR2015-00260, Paper 5 (December 23. 2005), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections.

In Daifuku Co., Ltd. v. Murata Machinery, Ltd., IPR2-15-00083, Paper 5 (November 7, 2014), the Board granted the petition a filing date, but found the claim charts objectionable because they contained attorney argument, and gave petitioner five business days to make corrections

Exhibit Labels

Sometimes the smallest things can thwart you.  In FarmedHere, LLC v. Just Greens, LLC, IPR2015-00333, Paper 6 (December 31, 2014), petitioner exhibits were found improper for violating 37 C.F.R. § 42.63(d), which requires each exhibit have an exhibit label with the Petitioner’s name, a unique exhibit number and unique page numbering affixed to the lower right corner of the exhibit’s pages.  The Board granted the petition a filing date, and gave petitioner five business days to make corrections

 

Rehearing . . . Granted?

In Handi Quilter, Inc. v. Bernina International AG, IPR2014-00270, Paper 17 (December 31, 2014), the Board granted petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review. Although it is not clear from the Board’s opinion, petitioner contended that the Board overlooked or misapprehended an important point presented in the Petition regarding why a person of ordinary skill in the art at the time of the alleged invention would have been motivated to combine the teachings.  The Board made a thorough examination of whether a person of ordinary skill in the art would have a reason to combine the references.  The Board noted that:

The Supreme Court counsels that often it will be necessary to look to (1) interrelated teachings of multiple patents, (2) the effects of demands known to the design community or present in the marketplace, and (3) the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent. KSR, 550 U.S. at 418.

The Board found that there was an articulated reason to support a conclusion of obviousness, and observed that the patent appears to take away form the prior art the obvious use of a prior art sensor in the prior art environment.  The Board make several analogies, first to Hotchkiss v. Greenwood, 52 U.S. 248 (1851), where the Court held that substitution of clay or porcelain knobs in place of known wood or metal knobs would have been obvious.  The Board said that in the current case, the sensor was known and was known to perform the function required by prior art..

The Board also cited Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327 (1945),where the inventor claimed the use of a particular solvent to solve a particular problem.  The characteristics of a solvent needed to solve the inventor’s problem were known. Likewise, solvents having those characteristics were known. While the prior art patents did not describe the use of the inventor’s particular solvent, the Court observed that: “Reading a list and selecting a known compound [i.e., solvent] to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention [i.e., it would have been prima facie obvious].” Sinclair, 325 U.S. at 335.  The Board said that in the current case, the prior art describes the need for a sensor and its characteristics and the prior art reveals that sensor’s having those characteristics were known.

Finally, the Board cited Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945) where the Supreme Court said the mere substitution of equivalents which do substantially the same thing in the same way, even though better results may be produced, is not such an invention as will sustain a patent).

The patent owner argued that a person of ordinary skill in the art would not look to the reference, but the Board said this was undermined by Supreme Court precedent, including Graham v. John Deere Co., 383 U.S. 1, 10 (1966), where the Court, quoted from a letter from Thomas Jefferson to Oliver Evans, observed “A man has a right to use a saw, an axe, a plane separately; may he not combine their uses on the same piece of wood?”  Similarly in Dunbar v. Myers, 94 U.S. 187, 195 (1876), the Court said “Ordinary mechanics know how to use bolts, rivets and screws and it is obvious that anyone knowing how to use such devices would know how to arrange a deflecting plate at one side of a circular saw which had such a device properly arranged on the other side.”  The Board found the parallel between these statements from Graham and Dunbar and the case before it was manifest.  The Board rephrased Jefferson’s question: “Does not a person skilled in the . . .art have a right to use the known sensor? On the record before it, the Board could not see why not.  Noting that if the answer is no, “then one would be suggesting removal from the public domain an obvious use of applicable sensor technology without a quid pro quo (i.e., teaching the public anything not essentially taught by [the prior art].

The Board agreed that it overlooked Petitioner’s argument that prior art itself, even without the support of expert testimony, provides sufficient rationale to show a reasonable likelihood that a person of ordinary skill in the art would have found it obvious to combine the teachings of the two references.

 

 

 

 

 

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And Cats and Dogs Living Together . . .

Well perhaps not the mass hysteria that Dr. Venkman anticipated in Ghostbusters, but the granting of a motion to amend is still an unusual occurrence.  However, in Riverbed Technology Inc. v. Silver Peak Systems, Inc., IPR2013-00402, Paper 35 (December 30, 2014), the Board granted patent owners motion to cancel the claims in the proceeding, and to add substitute claims 13 and 15.  That the substitute claims did not enlarge the claim scope and were adequately supported by the specification was not contested.  However, the patent owner also bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art.  The Board explained:

This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner:

The Board found patent owner’s explanation as to why the proposed substitute claims are different from pre-existing data de-duplication systems was both persuasive and supported by the evidence of record.  The Board noted that the patent owner accounted for the knowledge of a person of ordinary skill in the art.  The Board disagreed with petitioner’s arguments that the patent owner did not address prior art beyond that involved in the proceeding, and rejected petitioner’s complaint that patent owner failed to identify the level of skill in the art or provide supportive expert testimony, noting that expert testimony is not required.

The Board, however, declined to grant patent owner’s motion to substitute amended dependent claims.  The Board noted that the only amendments permitted are those responsive to the grounds of unpatentability raised in the petition. The patent owner argued that these amended dependent claims were allowable for the same reasons as the amended claims from which they depend, but this ran afoul of the presumption that only one substitute claim was permitted for each cancelled claim.  Even in the rare instances where amendment during inter partes review is permitted, a motion to amend is still a very blunt tool for patent owners trying to protect the invention.

Two other substitute claims were denied under §101.  Although  §101 is not a proper grounds for an IPR, a patent owner nonetheless bears the burden of establishing the patentability of amended claims.

 

 

 

December 30, 2014

New Filings (1)

DePuy Orthopaedics, Inc., filed IRP2015-00510 challenging u.S. Patent No. 8,658,710 on OXIDATION-RESISTANT AND WEAR-RESISTANT POLYETHYLENES FOR HUMAN JOINT REPLACEMENTS AND METHODS FOR MAKING THEM, assigned to Orthopaedic Hospital.

Institution Decisions (3)

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01054, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1, 2, 4, 6, 11–21, 26, 27, and 29 (all the challenged claims) of U.S. Patent No. 6,467,285.

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01058, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1–3, 5, 7, 12–22, 30, and 31 of U.S. Patent No. 6,581,395 (but not as to challenged claim 33).

In Hamilton Storage Technologies, Inc. v. U. of Virginia Patent Foundation, IPR2014-01060, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1–3, 5, 7, 12–22, 26, 30, 31, and 33 (all the challenged claims) of U.S. Patent No. 6,688,123.

In GoerTek, Inc. and GoerTek Electronics, Inc. v. KNOWLES ELECTRONICS, LLC, IPR2014-01009, Paper 11 (December 30, 2014), the Board instituted inter partes review of claims 1, 15, 16, 19, 21–23, 25, and 26 of U.S. Patent 8,018,049.

 

Dispositions (1)

In Riverbed Technology Inc.v. Silver Peak Systems, Inc., IPR2013-00402, Paper 35 (December 30, 2014), the Board granted patent owners motion to cancel the claims in the proceeding, and to amend by adding substitute claims 13 and 15.

 

 

 

 

 

Failure to Name Real Party in Interest Dooms Petition

In Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 IPR2014-00962, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–27 of U.S. Patent No. 7,054,547 for failure to name the real party in interest.  Paramount failed to name its parent corporation, Paramount Pictures Corporation violated 35 U.S.C. § 312(a)(2).  Paramount Pictures Corporation was not a real party in interest merely because of the parent-subsidiary relationship, but because “Patent Owner presents substantial evidence showing that Paramount Pictures Corporation exercised control over the dispute involving the . . .patent.”.  Compare Compass Bank v. Intellectual Ventures II LLC, IPR2014-00724, Paper 12 at 10–11 (November 6, 2014).

Apparently Paramount Pictures Corporation, which was already in litigation with the patent owner, was estopped from bringing a petition, so its omission as a real party in interest may have been strategic, rather than inadvertent.  However this is a good reminder to be careful in identifying the real party in interest, and follow the guidelines in the Office Patent Trial Practice Guide 77 Fed. Reg. 48,756, 48,759–60 (Aug. 14, 2012). Relevant factors include:

  • whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.
  • whether the non-party funds or directs and controls a proceeding.
  • the non-party’s relationship with the petitioner;
  • the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing;
  • the nature of the entity filing the petition.

Whether a party who is not a named participant in a given proceeding is a “real party-in-interest” to that proceeding is a highly fact dependent question.

 

 

December 29, 2014

Institution Decisions (3)

Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–5 of U.S. Patent No. 6,304,715 for failure to name the real party in interest.

Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00962, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–27 of U.S. Patent No. 7,054,547 for failure to name the real party in interest.

In Square, Inc. v. Think Computer Corporation, CBM2014-00159, Paper 9 (December 29, 2014), claims 1–7 and 9-11, 13–17, and 20–22 of U.S. Patent No. 8,396,808 (but not challenged claims 8 and 19).

 

Judicial Review of the Board’s Institution Decisions

35 USC 314(d) seems clear on its face:

(d) NO APPEAL. — The determination by the Director whether to institute a review under this section shall be final and nonappealable.

The Board’s decision whether to institute inter partes review is not reviewable.  However the statute is not enough to keep parties from trying.  In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 Fed 1373, 1375-76 (Fed. Cir. 2014), St. Jude tried to appeal the Board’s decision denying St. Jude’s petition for inter partes review, but the Federal Circuit dismissed the appeal based on the broad bar of 35 USC 314(d).  The Federal Circuit has also held that a decision not to institute is cannot be challenged with a Writ of Mandamus, because  in view of 35 USC 314(d), a disappointed petitioner has no “clear and indisputable” right to relief.  In re Dominion Dealer Solutions, 749 F.3d 1379, 1381 (Fed. Cir. 2014).

The Patent Owner is in no better position, the Federal Circuit denying Writs of Mandamus to patent owners attempting to challenge the Board’s decision to institute inter partes review.  In re Proctor & Gamble, 749 F.3d 1376. 1378-79 (Fed. Cir. 2014); see, also, In re Board of Trustees of the University of Illinois, 564 Fed. Appx. 1021 (Fed. Cir. 2014); In re Versata Development Group, Inc., 564 Fed. Appx. 1024 (Fed. Cir. 2014).  However, the Federal Circuit has expressly left open the possibility that an institution decision might be reviewable incident to the appeal of an final written decision.  In re Proctor & Gamble, 749 F.3d 1376. 1378-79 (Fed. Cir. 2014).

The review of the institution decision incident to the appeal of a Final Written Decision  is before the Federal Circuit in In re Cuozzo Speed Technologies LLC, [14-1301] (Fed. Cir.).  Cuozzo has argued that there are some decisions that should be reviewable, for example if the Board were to institute inter partes review based on §101 grounds (which is not provided for by statute).  Even the Patent Office, which intervened in the appeal, appeared to conceded that the restriction on appeal may be limited to the merits of the decision on patentability.

The Federal Circuit may provide some after-the-fact review for patent owners, but is there really no review of the decision of the Board no matter how contrary to the regulations and statutes?  Practitioners might consider a Petition to the Commissioner under 37 CFR §1.182:

1.182    Questions not specifically provided for.

All situations not specifically provided for in the regulations of this part will be decided in accordance with the merits of each situation by or under the authority of the Director, subject to such other requirements as may be imposed, and such decision will be communicated to the interested parties in writing. Any petition seeking a decision under this section must be accompanied by the petition fee set forth in §1.17(f).

The Commissioner should have the inherent authority to correct a serious error by the Board, although the Commission will likely not get involved in the merits of the preliminary patentability determination.

 

 

 

 

, because the decision not to institute was not a Final Written Decision,314(d) . olcano that is not enough to keep parties from trying.

 

 

 

December 24, 2014

New Filings

HM Electronics, Inc. filed IPR2015-00491 challenging U.S. Patent No. 8,694,040 on a REMOTELY CONFIGURABLE WIRELESS INTERCOM SYSTEM FOR AN ESTABLISHMENT.

Institution Decisions

In Inspectionlogic Corp. v. LDARtools, Inc., IPR2014-01044, Paper 11 (December 24, 2014), the Board instituted inter partes review of claims 7–16 (all of the challenged claims) of U.S. Patent No. 7,657,384.

 Dispositions

Qualcomm Technologies, Inc. v. Progressive Semiconductor Solutions LLC,  IPR2014-01541, Paper 9 (December 24. 2014) the Board  granted the parties’ joint motion to terminate.

In CB Distributors, Inc.  FONTEM HOLDINGS 1 B.V., IPR2013-00387, Paper 43 (December 24, 2014), the Board issued a Final Written Decision that claims 1–10, 12, 15–26, and 33–38 of U.S. Patent No. 8,156,944 were unpatenable, but not challenged claim 11.

Board Teaches Patent Owner About Precedent, and Petitioner About Showing Obviousness

Often times the best lessons are those learned at someone else’s expense. One such case is Valeo, Inc.v. Magna Electronics Inc., IPR2014-01206, Paper 13 (December 23, 2014).  The Patent Owner urged the Board to exercise its discretion not to institute inter partes review on a patent already being challenged arguing that the Board has held consistently that a petitioner must explain adequately why a follow-on petition is not redundant.  The Board rejected this argument, instructing the patent owner that “The citation of a single case does not demonstrate what the Board has consistently held.” The Board went on to consider the merits of the Petition, and it was petitioner’s opportunity to be schooled.  The Board found petitioner’s obviousness arguments deficient in three respects: First, Petitioner’s obviousness analysis is incomplete in that it fails to state explicitly the differences between the primary reference and the claimed subject matter, noting that.Graham v. John Deere Co. requires determining the differences between the claims at issue and the prior art.  Second, the Petition simply quotes portions of the references, and does not explain persuasively the relevance of the evidence.  The Board was looking for some explanation of how the quoted language meets the claim limitation.  Third, and finally, the Board complained that Petition failed to explain how the references are combined to reach the claimed subject matter, The Board criticized that petitioner’s conclusory statements were not substitutes for explanation of how the references would be combined.  The Board declined to institute inter partes review of any of the challenged claims.

Petitioner Authorized to File Sanctions Motion Against Inventor

In Shire Development LLC, LCS Group, LLC, IPR2014-00739, Paper 14 (December 23, 2014), the Board authorized petitioner to file a motion for sanctions after the inventor Dr. Louis Sanfilippo, send an email in violation of the Board’s December 9, 2014, Order prohibiting him from contacting Shire, Shire’s employees, the expert retained by Shire for this proceeding (Dr. Timothy Brewerton), and counsel for Petitioner, except through counsel for Patent Owner or in the presence of counsel for Patent Owner.  The Board agreed with Petitioner and clarified its earlier order:

Dr. Sanfilippo is prohibited from contacting Petitioner, Petitioner’s employees, Petitioner’s expert, Petitioner’s counsel, or anyone associated with Petitioner, in relation to this proceeding. Further, any communication from Patent Owner to Petitioner or Petitioner’s representatives regarding this proceeding must be signed by Patent Owner’s counsel of record. Moreover, Dr. Sanfilippo cannot sign any paper to be filed with the Board in this proceeding, but all papers must be signed by Patent Owner’s counsel of record. We remind counsel that they are subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).

While his conduct is no doubt disruptive, since Dr. Sanfilippo is not a party to the proceeding (the reason he was not allowed to proceed pro se), one wonders what authority the Board has over his actions