In Virtualagility Inc. v. Salesforce.com, Inc., [2014-1232] (July 20. 2014), the Federal Circuit reversed the district court’s denial of a stay of an infringement suit pursuant to AIA § 18(b)(1) pending disposition of a covered business method review of the patent in suit.

The Federal Circuit had jurisdiction of the stay pursuan to AIA § 18(b)(2).  The statute sets forth four points for the district court to consider in deciding whether to stay the litigation:

(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;

(B) whether discovery is complete and whether a trial date has been set;

(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and

(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.

The statute further provides that the Federal Circuit “shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.” The Federal Circuit declined to decided what standard of review it would apply, finding that under any standard the district court’s denial of stay must be reversed.

The district court questioned whether the petitioner was likely to succeed, but the Federal Circuit said that a challenge to the PTAB’s “more likely than not” determination at this stage amounted to an improper collateral attack on the PTAB’s decision to institute CBM review that would create serious practical problems.

In SAP America, Inc. v. Versata Software, Inc., CBM2013-00042, Paper 32 (July 10, 2014), the Board denied Versata discovery of the software corresponding to the documentation relied upon to prove the claims unpatentable, because it was not clear that petitioner’s witness relied upon the software.

In Cisco Systems, Inc. v. AIP Acquisition LLC, IPR2014-00247, Paper 20 (July 10, 2014), the Board previously held that if U.S. Patent No. 7,724,879 expires before the final written decision, the claims would be given their ordinary meaning rather than their broadest reasonable interpretation.  In Paper 20 the Board decided that coincidentally, the ordinary meaning and the broadest reasonable interpretation for the disputed terms were the same.

In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 19, (July 9, 2014) the Board granted Enzymotec’s motion for joinder of IPR2014-00556 with IPR2014-00003. Absent joinder with the other proceeding, Enzymotec’s Petition for Inter partes review is barred under 35 U.S.C. § 315(b).

The Board did not believe that the possibility of broadening the scope of issues in IPR2014-00003 was an adequate reason for denying joinder, noting section 315(c) permits joinder of “any person who properly files a petition under section 311.” There is no language in either § 311 or § 315(c) requiring the Board to limit Enzymotec’s Petition to identical issues in IPR2014-00003.

New Petitions Filed

RPC Formatec GmbH filed IPR2014-01127 challenging U.S. Patent No. 8,662,075.

Institution Decisions

In SAP America Inc. v. Clouding IP, LLC, IPR2014-00299, Paper 8 (July 9, 2014) the Board instituted inter partes review of claims 1, 2, 25, 28, 32, (but not 50–57) of U.S. Patent No. 6,925,481.

In SAP America Inc. v. Clouding IP, LLC, IPR2014-00300, Paper 9 (July 9, 2014) the Board instituted inter partes review of claims 1–9 and 17 of U.S. Patent No. 7,254,621.

In Enzymotec Ltd. v. Neptune Technologies & Bioressources Inc., IPR2014-00556, Paper 18 (July 9, 2014), the Board instituted inter partes review of  claims 1 – 6, 9, 12, 13, 19 – 29, 32, 35, 36, and 42 – 46 of U.S. Patent No. 8,278,351.

Final Written Decisions

In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00407, Paper 14, IPR2014-00408, Paper 13 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.

In Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, LLC, IPR2014-00209, Paper 28, IPR2014-00212, Paper 30 (July 9, 2014) on the motion of petitioners LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. ( “the LG Petitioners”), the Board entered adverse judgment as to the LG Petitioners, but not the other petitioners.

Institution Decisions

Stewart Title Guaranty Company v. Segin Software LLC,  CBM2014-00051 (July 8, 2014) instituted a covered business method review of claims 1–10 of U.S. Patent No. 8,165,939.

SDI Technologies, Inc. v. Bose Corporation, IPR2014-00343, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 52, 53, 55-61, and 75 of U.S. Patent No. 8,401,682.

SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, Paper 11 (July 8, 2014), the Board instituted inter partes review of claims 25, 26, 51-53, 55-62, 75, and 76 of  8,364,295.

PRISM Pharma Co., Ltd. v. JW Pharmaceutical Corp., IPR2014-00315, Paper 14, (July 8, 2014), the Board denied inter partes review of claims 1-3 and 5-7 of U.S. Patent No. 8,318,738.

Final Written Decisions

Smith & Nephew, Inc.v. The University of North Carolina at Chapel Hill, IPR2-14-00112 , Paper 21 (July 8, 2014), the Board terminated the proceeding in view of the Settment between the parties.