Institution Decisions (2)

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.

In Diablo Technologies, Inc. v. NETLIST, INC., IPR2014-01011, Paper 12 (December 16, 2014), the Board instituted inter partes review of claims 15–17, 22, 24, 26, and 31–33 of U.S. Patent No. 7,881,150.

Institution Decisions

In Fujitsu Semiconductor Limited v. ZOND, INC., IPR2014-00864, Paper 16, (December 11, 2014), the Board instituted inter partes review of claims 18–34 (all the challenged claims) of U.S. Patent No. 6,806,652.

In Taiwan Semiconductor Manufacturing Company, Ltd. v. ZOND, INC., IPR2014-00861, Paper 12, (December 11, 2014), the Board instituted inter partes review of claims 18–34 (all the challenged claims) of U.S. Patent No. 6,806,652.

In Nexsen Pruet, LLC v. Thomson Reuters (Legal), Inc., IPR2014-00854, Paper 7, (December 11, 2014), the Board denied inter partes review of claims 1-13 of U.S. Patent No. 8,412,564.

In VMware, Inc. v. Elec. & Telecomm’n Research Inst., IPR2014-00901, Paper 14 (December 11, 2014) the Board instituted inter partes review of claims 1–9 of U.S. Patent No. 6,978,346.

Dispositions

In Sony Online Entertainment LLC v. Agincourt Gaming, LLC, IPR2014-01232, Paper 10, (December 11, 2014), the Board terminated the proceedings on the joint motion of the parties.

In Sony Online Entertainment LLC v. Agincourt Gaming, LLC, IPR2014-01255, Paper 10, (December 11, 2014), the Board terminated the proceedings on the joint motion of the parties.

In HTC Corporation v. E-WATCH, Inc., IPR2014-00989, Paper 6 (December 9, 2014), the Board instituted inter partes review of claims 1–6, 8, 10, 11, 13–18, 21–29, and 31 (“all of the challenged claims”) of U.S. Patent No. 7,643,168

Failure to include within the petition an exhibit list with the exhibit number and a brief description of each exhibit. 37 C.F.R. § 42.63(e).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014); SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014) .

Incorrect spacing in petition. Block quotations should be either 1.5 spaced or double-spaced. 37 C.F.R. 42.6(a)(2)(iii).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014); SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014); CoreLogic, Inc. v. Boundary Solutions, Inc., IPR2015-00226, Paper 3, IPR2015-00228, Paper 3 (November 26, 2014).

Incorrect spacing in petition. Footnotes should be doublespaced. 37 C.F.R. § 42.6(a)(2)(iii).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014).

Incorrect font used in the footnotes of the petition. 37 C.F.R. § 42.6(a)(2)(ii)(A).  SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00135, Paper 6 (November 19, 2014) ; SpaceCo Business Solutions, Inc. v. Moscovitch, IPR2015-00127, Paper 5 (November 19, 2014) .

Failure to provide a statement identifying how the challenged claims are to be construed, 37 C.F.R. §§42.104(b)(3), 42.405(b)(3)(ii)), including exemplary claim terms and their proposed construction. Stealth Monitoring, Inc. v. Discovery Patents, LLC, IPR2015-00256, Paper 3 (December 2, 2014).

In Pacific Market International, LLC v. Ignite USA, LLC, IPR2014-00561, Paper 23, (December 2, 2014), the Board granted Petitioner’s motion to file a Supplemental Declaration of its expert, with additional reasons to combine the references.

The Board said that although a party may meet the requirements laid out in 37 C.F.R. § 42.123 so as to obtain authorization to file a motion to submit supplemental information, that does not, itself, guarantee that the motion will be granted. The provision for submitting supplemental information is not intended to offer a petitioner a routine avenue for bolstering deficiencies in a petition raised by a patent owner in a Preliminary Response.

The Board observed that “The supplemental testimony does not operate to change any grounds of unpatentability that were authorized in this proceeding, nor does it change the type of evidence initially presented in the Petition to support those grounds of unpatentability. Rather, as urged by PMI, the supplemental testimony is offered simply as ‘additional evidence that [in PMI’s view] confirms the prima facie obviousness of claims 16–19 as set forth in PMI’s petition.'”

Nothing that, as Patent Owner suggested, the information might be included with petitioner’s reply, the Board concluded that “[m]aking the Supplemental Declaration of record now increases the likelihood that the record will be developed more fully with a minimum number of depositions and without additional motion practice.”

New Filings

Fike Corporation filed IPR2015-00341 challenging U.S. Patent No. 8,674,260, assigned to U.S. Patent No. 8,674,260.

Institution Decisions

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00131, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-15 of U.S. Patent No. 7,533,056.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00135, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-56 of U.S. Patent No. 6,772,132.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00136, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-40 of U.S. Patent No. 6,766,304.

In TD Ameritrade Holding Corporation v. Trading Technologies International, Inc.,  CBM2014-00137, Paper 19 (December 2, 2014), the Board declined to institute a covered business method review of claims 1-19 of U.S. Patent No. 7,685,055.

Dispositions

In Cypress Semiconductor Corporation v. Blackberry Ltd., IPR2014-00397, Paper 19, IPR2014-00400, Paper 22 (December 2, 2014), the Board terminated the inter partes reviews on the joint motions of the parties.

In ABB Technology Ltd. v. IPCO LLC, IPR2013-00482, Paper 35, IPR2014-00147 (December 2, 2014), the Board terminated the inter partes review on the joint motion of the parties.

New Filings

Tissue Transplant Technology Ltd. filed IPR2015-00320 challenging U.S. Patent No. 8,709,494, assigned to Surgical Biologics, LLC.

FramedHere, LLC filed IPR2015-00333 challenging U.S. Patent No. 8,533,992, assigned to Just Greens, LLC

Institution Decisions

In McClinton Energy Group LLC v. Magnum Oil Tools International, Ltd., IPR2014-00993, Paper 14 (December 1, 2014), the Board instituted inter partes review of claims 1–38 of U.S. Patent No. 8,459,346.

In Torrent Pharmaceuticals Limited v. Novaritis, IPR-00784, Paper 11 (December 1, 2014), the Board instituted inter partes review of  claims 1–32 of U.S. Patent No. 8,324,283.

In BlackBerry Corporation v. Cypress Semiconductor Corporation, IPR2014-01496, Paper 11, IPR 2014-01470, IPR 2014-01483, IPR 2014-01488, IPR 2014-01492, IPR 2014-01495 (December 2, 2014), the Board granted the parties joint motion to terminate.

In Commerce Bancshares, Inc. v. Intellectual Ventures II LLC, IPR2014-00793, Paper 7 (December 2, 2014), the Board declined ot institute inter partes review of claims 1–10 and 12–33 (the “challenged claims”) of U.S. Patent No. 6,715,084.

In Brainlab AG v. Sarif Biomedical LLC, IPR2013-00753, Paper 14 (December 1, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 27 (November 28, 2014), the Board declined to limit the scope of the patent owner’s cross-examination of petitioner’s witness.  Petitioner sought to limit cross examination only to the grounds instituted by the Board.  The Board noted that the scope of cross examination is normally limited to the scope of the direct examination. 37 C.F.R. § 42.53(d)(5)(ii). While the Board agreed that the most pertinent portions of the direct testimony may be related to the instituted ground, it was not persuaded that the remaining portions would not be relevant. The testimony could be relevant to the state of the prior art or the credibility of the declarant, and therefore the Board declined to further limit the scope of cross-examination.

Institution Decisions

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00789, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 6,738,155..

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00790, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–3 (all the challenged claims) of U.S. Patent No. 6,611,349.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00791, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 10–14 of U.S. Patent No. 6,611,349 (but not challenged claims 4-9).

In Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00958, Paper 11 (November 28, 2014), the Board denied inter partes review of claims 1–17 of U.S. Patent No. 5,602,831.

In Valeo, Inc. v. Magna Electronics Inc., IPR2014-01208, Paper 11 (November 26, 2014), the Board gave the patent owner an entire page to respond to petitioner’s brief on the issue of real party interest.  The patent owner wanted to identify previous Board rulings pertinent to the issue and include relevant filings by petitioner — hopefully one page (excluding heading and signature block — will be enough to get this done.

Considering that patent owner had to set up and participate in a conference call, one wonders whether the burden to get this one page was worth it.