In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01028, Paper 13, (December 22, 2014) the Board declined to institute inter partes review of claims 1–12, 21–24, 26–35 (the “challenged claims”) of U.S. Patent No. 6,020,980. The Board noted that Petitioner’s challenge of claims 1, 22, and 26 is based upon substantially the same prior art and arguments that were before the Office in the ex parte reexamination of the ’980 patent—Control No. 90/012,650—that resulted in Ex Parte Reexamination Certificate (9670th) issued May 20, 2013 (Ex. 1002). Accordingly, the Board exercised its discretion to decline to institute inter partes review.
In Volkswagen Group of America, Inc. v. EmeraChem Holdings, LLC, ORP2014-01556 (December 22, 2014), the Board authorized the Petitioner to file a Motion to Correct its filings, and authorized the patent owner to responds. The Petition required on several foreign language references, and while the Petition included an English translation of the references, it failed to include the required certification that the translation is accurate.
This is a good reminder that when relying upon foreign language references, 37 C.F.R. § 42.63(b) requires that foreign language documents be translated to English and include an affidavit attesting to the accuracy of the translation.
In TD Bank Group v. Global Session Holdings SRL, IPR2014-01356, Paper 10 (December 22, 2014), the Board considered what is a clerical error in deciding whether to allow petitioner to correct alleged clerical errors in its filings. Among the many errors petitioner sought to correct was the name of the patent owner. It appeared that petitioner relied upon the abstract of title available on the USPTO website, without noticing that the recorded document as listed as a “license” rather than assignment. While patent owner did not object to correctly listing the patent owner in the caption, it argued that the error was not clerical. The Board agreed, noting petitioner listed the exclusive licensee as the patent owner based on its review of the assignment records, even though these records indicate the agreement between Global Sessions LP and Global Session Holding is a “License.” The Board concluded that while there may have been an error in determining ownership of the patent, that error was not clerical or typographical in nature. Accordingly, it denied petitioner’s request to correct the caption of the Petition. The effect petitioner’s motion to correct was actually an attempt to substitute parties. Petitioners must be very careful when reviewing the USPTO’s assignment records, which are confusing.
Institution Decisions (1)
In Cisco Systems, Inc.v. Constellation Technologies LLC, IPR2014-00871, Paper (December 19, 2014), the Board instituted inter partes review of claims 1–25 and 34–41 of U.S. Patent No.6,845,389.
In Universal Remote Control, Inc. v. UEI Cayman Inc., IPR2014-01082, Paper 9 (December 18, 2014), the Board declined to institute inter partes review of claims 2, 5, 22, and 23 of U.S. Patent No. 7,589,642. Petitioner argued that a claim limitation was inherent in all of the cited references. The Board explained that “To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The Board noted that petitioner’s only support was the conclusory declaration of its expert. The Board said that conclusory statements that are without factual or evidentiary support are insufficient, citing 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Lacking any other proof of inherency, the Board could not determine that the element was in fact inherent in the prior art, and declined to institute inter partes review.
In Organik Kimya San. ve Tic. A.S. v. Rohm And Haas Company, IPR2014-00185, Paper 42 (December 18, 2014), the Patent Owner was denied permission to file a motion to compel the deposition of the declarant in a declaration submitted by the Petitioner in opposition to the Motion to Amend. The Declaration was from a separate ITC proceeding between the parties, so the Board agreed that the deposition was not Routine Discovery under 37 C.F.R. § 42.51(b)(1)(ii). However, the Board cautioned petitioner that the Declaration “may be entitled to little or no weight, as it has not been subject to cross-examination as it pertains to the instant proceeding.” The Board then sent the parties off to work things out, instructing the Patent Owner to renew the motion if agreement is not reached.
Institution Decisions (2)
In Universal Remote Control, Inc. v. UEI Cayman Inc., IPR2014-01082, Paper 9 (December 18, 2014), the Board declined to institute inter partes review of claims 2, 5, 22, and 23 of U.S. Patent No. 7,589,642.
In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00660, Paper 24 (December 18, 2014), the Board instituted inter partes review of claim 30 of U.S. Patent No. 5,745,574.
In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0033, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 7-16 and 23-27 were unpatentable, but that claims 1-6 and 17-22 were not. One of the principal pieces of prior art relied upon by Petitioner was a technical report published by the Department of Computer Science and Electrical Engineering of the University of Maryland, Baltimore County more than one year before the earliest priority date claimed. However the Board found that Petition failed to establish that the technical report was a printed publication.
The Board said that the determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public,” citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry, the Board said, is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date, citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).
The Board noted that Petition had not shown that the report was downloaded or otherwise disseminated, or how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the report. The Board found that the report was similar to uncataloged theses, citing In re Bayer, 568 F.2d 1357, 1361-62 (CCPA 1978) and In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). The Board found that the report was only available for “viewing and downloading” to members of the public who happened to know that it was there, and thus petitioner had not met its burden of showing that the report was publicly accessible
Institution Decisions (2)
In Mylan Pharmaceuticals, Inc. v. Gilead Sciences, Inc., IPR2014-00886, Paper 15 (December 17, 2014), the Board declined to institute inter partes review of claims 1–7, 9–14, and 16–18 of U.S. Patent No. 5,935,946.
In Renesas Electronics Corporation v. ZOND, INC., IPR2014-01066, Paper 17 (December 17, 2014), the Board instituted inter partes review of claims 18–34 of U.S. Patent No. 6,806,652.
In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0033, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 1-5 of U.S. Patent No. 8,457,670 were unpatentable..
In Groupon, Inc. v. Blue Calypso, LLC, CBM2013-0034, Paper 51 (December 17, 2014), the Board issued a Final Written Decision holding that claims 7-16 and 23-27 were unpatentable, but that claims 1-6 and 17-22 were not.
In Ericcsson Inc., v. Intellectual Ventures I LLC, IPR2014-00921, Paper 8 (December 16, 2014), the Board instituted inter partes review of claims 23, 24, 60, and 61 of U.S. Patent No. 6,023,783, but not as to claims 1–5 and 38–42. The Board concluded that a reference may be said to teach away if it “criticize[s], discredit[s], or otherwise discourage[s]” investigation into a patentee’s claimed invention. DePuy Spine Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009); accord Syntex (U.S.A) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“[A] reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.”).
The Board noted that a reference relied upon by petitioner characterizes an element as “necessary,” and therefore does not convey reasonably that one with ordinary skill would view the element as optional, unnecessary, and, thus, subject to being omitted as discretionary. The Board also found that the Petition did not make any meaningful attempt to explain why a skilled artisan would discount the “necessary” nature of the element