Category Archives: Covered Business Methods

July 10, 2010

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New Petitions Filed

Actavis, Inc. filed IPR2014-01126 (July 10, 2014) challenging U.S. Patent No. RE38,551.

NEC Corporation of America filed IPR2014-001131 (July 10, 2014) challenging U.S. Patent No. 6,819.923, assigned to Nokia Siemens Networks OY.

NEC Corporation of America filed IPR2014-001132 (July 10, 2014) challenging U.S. Patent No. 7,215,962, assigned to Nokia Siemens Networks GmbH & Co., KG.

Pantech Co. Ltd. filed IPR2014-001133 (July 10, 2014) challenging U.S. Patent No. 7,218,923, assigned to Nokia Siemens Networks OY.

Amazon.com, Inc., filed IPR2014-001134 (July 10, 2014) challenging U.S. Patent No. 7,914,174 assigned to Siemens AG.

HTC Corporation filed IPR2014-001135 (July 10, 2014) challenging U.S. Patent No. 6,377,804, assigned to Nokia Siemens Networks OY.

HTC Corporation filed IPR2014-001136 (July 10, 2014) challenging U.S. Patent No. 8,055,820, assigned to Cellular Communications Equipment LLC.

Institution Decisions

In Jack Henry And Associates, Inc. v. DataTreasury Corporation,  CBM2014-00056 (July 10, 2014), the Board granted covered business method review of claims 42 and 43 (but not challenged claims  1, 2, 16, 18, 26, 27, 29, 36, and 38) of U.S. Patent No. 6,032,137.

In Jack Henry And Associates, Inc. v. DataTreasury Corporation, CBM2014-00057 (July 10, 2014), the Board granted covered business method review of claims 42 and 43 (but not challenged claims 1, 2, 16, 18, 26, 27, 29, 36, and 38) of U.S. Patent No. 6,032,137.

Square, Inc. v.REM Holdings 3, LLC, IPR2014-00312, Paper 12 (July 10, 2014), the Board instituted inter partes review of claims 1-17 of U.S. Patent No. 8,584,946.

Purdue Pharma L.P. v. Depomed, Inc., IPR2014-00378, Paper 10 (July 10, 2014), the Board instituted inter partes review of claims 1, 8-10, 13-15, 61-62 (but not challenged claims 10 and 11) of U.S. Patetn No. 6,340,475.

Euro-Pro Operating LLC v. Acorne Enterprises, LLC, IPR2014-00351, Paper 19 (July 10, 2014), the Board instituted inter partes review of claims 1, 13, and 14 of U.S. Patent No. 6,515,262.

SAP America, Inc. v. Clouding IP, LLC, IPR2014-00308, Paper 8 (July 8, 2014), the Board instituted inter partes review of claims 1-9 of U.S. Patent No. 5,825,891.

 

Final Written Decisions

Harmonic Inc. v. Avid Technology, Inc., IPR2013-00232, Paper 27 (July 10, 2014), the Board held that claims 1-10 of U.S. Patent No. 5,495,291 were unpatentable (but not claims 11-16).

NuVasive, Inc. Waraw Orthopedic, Inc., IPR2013-00206, Paper 65, (July 10, 2014), the Board held that claims 17–23 of U.S. Patent No. 8,251,997 were unpatentable, but not challenged claims 9–16 and 24–30.

NuVasive, Inc. Waraw Orthopedic, Inc., IPR2013-00208, Paper 62, (July 10, 2014), the Board held that claims 1–8 of U.S. Patent No. 8,251,997 were unpatentable.

 

 

Waiting for Alice

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Callidus Software Inc. v. Versata Development Group, Inc., CBM2013-00052, CBM2013-00053, Paper 28, CBM2013-00054, Paper 32 (June 2, 2014), the Board agreed to extend the due dates, provided that the patent owner waived its right to file a motion to amend, agreeing with the patent owner that the additional time would allow the parties to take into account any decision made by the Supreme Court in Alice Corp.v. CLS Bank Int’l, et al., Docket No. 13-298 (2014).

May 1, 2014

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Institution Decisions

Trulia, Inc. v. Zillow Inc., CBM2014-00115, Paper 8 (May 1, 2014), the Board instituted a covered business method review of claims 2, 5, 15-24, and 40 of U.S. Patent 7,970,674, but not as to claim 25.

Terminations

Voltage Security, Inc. v. Protegrity Corporation, CBM2014-00024, Paper 17 (May 1, 2014), the Board terminated the covered business method review on the joint motion of the parties.

Final Written Decisions

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00052, Paper 88 (May 1, 2014), the Board cancelled claims 11-23 and 26-31 of U.S. Patent No. 7,276,543, but found that claims challenged claims 24, 25, and 32-34 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00051, Paper 81 (May 1, 2014), the Board cancelled claims 1-9 of U.S. Patent No. 6,110,593, and denied the Patent Owner’s motion to amend.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00053, Paper 66 (May 1, 2014), the Board cancelled claims 35, 39, 44, and 53-57 of U.S. Patent No. 7,276,543, but found that 36-38, 40-43, and 45-52 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00050, Paper 77 (May 1, 2014), the Board cancelled claims 1-19 of U.S. Patent No. 6,323,255, and denied patent owner’s motion to amend.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00047, Paper 84 (May 1, 2014), the Board found that claims 1-14 (all the claims) of U.S. Patent No. 6,438,306 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00044, Paper 92 (May 1, 2014), the Board found that claims 1-22 (all of the claims) of U.S. Patent No. 6,961,508 were not invalid.

Corning Incorporated v. DSM IP Assets B.V., IPR2013-00043, Paper 95 (May 1, 2014), the Board found that claims 1-18 (all of the claims) of U.S. Patent No. 7,171,103 were not invalid.

St. Jude Medical, Inc. v. The Regents of the University of Michigan,IPR2013-00041, Paper 69 (May 1, 2014), the Board cancelled claims 23 and 25-29 (all of the challenged claims) of U.S. Patent No. 5,746,775.

 

No 102(e) Prior Art in a CBMR

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In Trulia, Inc, v. Zillow, Inc., CBM2013-00056, Paper 19 (April 10, 2014), it was called to the Board’s attention that the prior art relied upon in the petition was 102(e) which is not proper prior art for a covered business method review.  The petitioner pointed out that each reference had a corresponding publication that was 102(b) prior art, but the Board found that it could not change the grounds on which the trial was instituted, and intead suggested that the petitioner file an second petiton, replacing the 102(e) art with the 102(b) art, and move to join the proceedings.  While the time for joinder passed the day of the Board’s order, the Board said it would waive the joinder deadline if both parties were amenable,

 

April 8, 2014

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Petitions Filed

Luxottica Retail North America, Inc., filed IPR2014-00593 challenging claims 1-7, 9, 12, 14, 15 and 17-19 of  U.S. Patent No. 6,624,843 assigned to Lennon Image Technologies LLC.

Trials Intituted

In Google Inc. v. Unwired Planet, LLC, CBM2014-00006, Paper 11 (April 8, 2014), the Board instituted a covered business method review against claims 25-29 (all of the challenged claims) of U.S. Patent No. 7,203,752.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00073, Paper 14 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24, 30, and 33-37 of U.S. Patent No. 8,192,356, but not as to challenged claims 25 and 26.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00074, Paper 15 (April 8, 2014), the Board instituted an inter partes review against claims 21, 22, 24-26, 30, and 33-37 (all of the challenged claims) of U.S. Patent 8,192,356.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00076, Paper 13 (April 8, 2014), the Board refused to institute an inter partes review against claims 1, 2, 4, 5, 10, 15, 17, and 18 of U.S. Patent No. 8,016,767.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00081, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.

In Medtronic, Inc. v. NuVasive, Inc., IPR2014-00087, Paper 10 (April 8, 2014), the Board instituted an inter partes review against claims 1-12 (all of the challenged claims) of U.S. Patent 8,005,535.

In Google v. Unwired Planet, LLC, CBM2014-000005, Paper 10 (April 8, 2014), the Board instituted a covered business method review against claims 1-6 of U.S. Patent No. 7,024,205.

In Google v. Unwired Planet, LLC, IPR 2014-00037, Paper 9 (April 8, 2014), the Board instituted an Inter Partes Review against claim 25, but not dependent claims 26–29, of U.S. Patent No. 7,203,752

In Google v. Unwired Planet, LLC, IPR 2014-00036, (April 8, 2014), the Board instituted an Inter Partes Review against claims 1-6 of U.S. Patent No. 7,024,205.

Motions to Strike Aren’t Necessary (or Are They)?

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In Apple Inc. v. SightSound Technologies LLC, CBM2013-00023, Paper 61 (April 2, 2014) the Board denied patent owner’s request for permission to file a motio to strike the Petitioner’s reply for new arguments not responsive to the arguments the patent owner made in its response, and to strike portions of Petitioner’s declaration for improperly containing legal argument.  In both instances, the Board said that in most cases it is capable of identifying and exclusing improper arguments and testimony.  However, merely asking for permision probably sensitized the Board to the issue.

 

The Board is Hesitant to Stay Proceedings

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In International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049, CBM2013-00050, and CBM2013-00051, Paper 19, (March 28, 2014), the Board declined to stay there covered business method reviews so that they might be synced up with three inter partes reviews.   The Board noted that if the inter partes reviews weren’t instituted, alot of time would be wasted, and if they were instittued, the resulting schedule woudl make it difficult for the Board to render a final written decision within one year of the institution of the covered business method reviews.

 

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Petiioner Can Submit Supplemental Information Challenging Additional Claims

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In Callidus Software Inc. v. Versata Software, Inc., CBM2013-00052, Paper 26, CBM2013-00053, Paper 21, CBM2013-00054, Paper 24 (March 28, 2014), Petitioner sought to file supplemental infomration to challenge dependent claims not challenged in the Petitions. The Board determined that considering the supplemental information would not be in the interests-of-justice, because it would create a trial within a trial, requiring briefing by the Petitioner, an opposition by the Patent Owner, and a reply by Petitioner. Moreover, there would need to be time to allow for cross-examination of any witness providing testimony as to the issues raised. All of this would impact the current schedule, and would not lead to a just, speedy, and inexpensive proceeding pursuant to 37 C.F.R. § 42.1(b).  The Board noted that Petitioner could still file new petitions raising the new issues.

March 25, 2014

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Institution Decisions

In Regions Financial Corporation v. Retirement capital Access Management Company LLC, CBM2014-00012, Paper 16, (March 25, 2014) the Board instituted a CBM against U.S. Patent No. 6,625,582., whihc was also the subject of CBM2013-00014.

Termination Decisions

In Raymarine, Inc. v. Navico Holding AS, IPR2013-00497, Paper 17 (March 25, 2014), the Board terminated in the IPR in view fo the joint motion filed by the parties.  The Board noted that it instituted trial on February 11, 2014, and that it did not have before it full briefing on the trial issues and the Board has not entered a final decision, and thus it was appropriate to enter judgment without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72