In K40 Electronics, LLC v. Escort Inc., IPR2013-00203, Paper 46 (August 27, 2014), the Board denied the patent owner’s motion to exclude. The Board first review the proper procedure for objecting to, and moving to exclude, evidence: When a party objects to evidence that was submitted during a preliminary proceeding, such an objection must be served within ten business days of the institution of trial. See 37 C.F.R. § 42.64(b)(1). Once a trial has been instituted, an objection must be served within five business days.  C.F.R. § 42.64(b)(1).The objection to the evidence must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. C.F.R. § 42.64(b)(1). This process allows the party relying on the evidence to which an objection is served timely the opportunity to correct, by serving supplemental evidence within ten business days of the service of the objection. 37 C.F.R. §§ 42.64(b)(1), 42.64(b)(2). If, upon receiving the supplemental evidence, the opposing party is still of the opinion that the evidence is inadmissible, the opposing party may file a motion to exclude such evidence. 37 C.F.R. § 42.64(c).

The Board noted that the patent owner failed to indicate it served objections, and did not identify or explain its objections.  The Board denied the motion to exclude in view of the patent owner’s failure to comport with the requirements of 37 C.F.R. § 42.64.

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Commercial Success

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Commercial success typically is shown with evidence of “significant sales in a relevant market.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (citation omitted). Furthermore, to establish a proper nexus between a claimed invention and the commercial success of a product, a patent owner must offer “proof that the sales [of the product] were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.”  In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, “if the commercial success is due to an unclaimed feature of the device,” or “if the feature that creates the commercial success was known in the prior art, the success is not pertinent.”  Ormco, 463 F.3d at 1312; see also In re Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (requiring a determination of “whether the commercial success of the embodying product resulted from the merits of the claimed invention as opposed to the prior art or other extrinsic factors”).

Copying 

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19 (August 22, 2014) the Board explained;

Copying as objective evidence of nonobviousness requires evidence of effort to replicate a specific product. Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004).

New Filings

SMART Modular Technologies Inc. filed IPR2014-01369 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01370 challenging U.S. Patent No. 8,301,833 assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01371 challenging U.S. Patent No. 8,516,187, assigned to Netlist, Inc.

SMART Modular Technologies Inc. filed IPR2014-01372 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01373 challenging U.S. Patent No. 8,001,434 assigned to DBD Credit Funding LLC.

SMART Modular Technologies Inc. filed IPR2014-01374 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

SMART Modular Technologies Inc. filed IPR2014-01375 challenging U.S. Patent No. 8,359,501 assigned to DBD Credit Funding LLC

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2014-00245, Paper 19, 2014 (August 22, 2014), the Board patent owner’s motion for additional discovery because it was persuaded that patent owner has shown, beyond mere speculation or possibility, that its requests would return something useful.  The Board noted that the patent owner provided bare assertions of an alleged commercial success without supporting those assertions with facts or other evidence, and failed to provide a threshold amount of evidence tending to show that there is a nexus between the alleged commercial success and the features of the proposed substitute claims.

The Board concluded that patent owner:

 has not provided a threshold amount of evidence of (1) sales allegedly amounting to commercial success, (2) an alleged nexus between the claimed inventions and any commercial success of Petitioner’s products, (3) evidence of efforts to replicate the features of the proposed substitute claims, or (4) evidence that Petitioner has the requested laudatory documents. Although a conclusive showing of any of these facts is not necessary at this stage, some evidence is needed to establish that there is more than a mere possibility that Patent Owner’s requests would uncover something useful.

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