Filing Dates and Corrected Filing Dates

In SCHOTT Gemtron Corporation SSW Holdings Company, Inc., IPR2014-00367, Paper 21 (August 21, 2014), the Board changed the filing date of the Petition to the date that all of petitioner’s papers, including the supporting declaration, were received.  Because this change may have made the petition untimely, the Board gave the petitioner time to file a motion for corrected filing date, referring the petitioner to ABB Inc. v. Roy-G-Biv Corp., IPR2013-00063, slip op. (PTAB Jan. 16, 2013) (Paper 21), and Conmed Corp. v. Bonutti Skeletal Innovations LLC, IPR2013-00624, slip op. (PTAB Feb. 21, 2014) (Paper 18), addressing motions to correct filed in similar circumstances.

August 20, 2014

Institution Decisions

In Google Inc. v. Arendi S.A.R.L., IPR2014-00450, Paper 10 (August 20, 2014), the Board instituted inter partes review of claims 1, 7, 10, 12, 16, and 20 of U.S. Patent No. 7,921,356, but not with respect to claims 2–6, 8, 9, 11, 13–15, and 17–19 (30% of the challenged claims).

In Google Inc. v. Arendi S.A.R.L., IP2014-00452, Paper 10 (August 20, 2014), the Board instituted inter partes review of claims 1–79 of U.S. Patent No. 6,323,853 (all of the challenged claims).

In Crocs, Inc. v. Polliwalks, Inc., IPR2014-00424, Paper 8 (August 20, 2014), the Board instituted inter partes reviwe of claims 1–19 of U.S. Patent No. 8,613,148 (100% of the challenged claims).

Dispositions

In LG Electronics Inc. v. NFC Technology, LLC, IPR2014-00959, Paper 12 (August 20, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In LG Electronics Inc. v. NFC Technology, LLC, IPR2014-00964, Paper 10 (August 20, 2014), the Board terminated the inter partes review on the joint motion of the parties.

In Ossur Americas, Inc. v. Otto Bock Healthcare LP, IPR2014-00145, Paper 29 (August 20, 2014) the Board terminated the inter partes review on the joint motion of the parties.

In Groupon Inc. v. Maxim Integrated Products, Inc., CBM2014-00090, Paper 12 (August 20, 2014) the Board  terminated the covered business method review on the joint motion of the parties.

SCHOTT Gemtron Corporation v. SSW Holding Company, Inc., IPR2013-00358, Paper 106 (August 20, 2014) the Board found that claims 1, 13, and 25 of U.S. Patent No. 8,286,561 (all of the challenged claims) were unpatentable.

 Rehearing Decisions

In Eizo Corporation v. Barco N.V., IPR2014-00358, Paper 14 (August 20, 2014), the Board denied rehearing of its decision to institute inter partes review of claims 101–104 of U.S. Patent No. US RE43,707.

 

 

August 19, 2014

Institution Decisions

In Corning Optical Communications RF LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 10 (August 19, 2014) the Board instituted inter partes review of  claims 1, 8, 9, 11, 18–26, and 29 of U.S. Patent No. 8,597,041 (all of the challenged claims).

In Corning Optical Communications RF LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 10 (August 19, 2014) the Board instituted inter partes review of claims 31, 37, 39, 41, 42, 55, and 56 of U.S. Patent No. 8,562,366 (all of the challenged claims).

 

 

Board Holds Petitioners to Strict Compliance with the Rules

In Metrics, Inc.v. Senju Pharmaceutical Co., Ltd., IPR2013-01041, Paper 8, and IPR2013-01043, Paper 8 (August 15, 2014), at patent owner’s promoting, the Board found fault with the petitioners first amended petition, and required a second amended petition.  The petitioenr was also required to refile a new set of exhibits, numbered beginning with Ex. 1001, and numbering each page of each exhibit.

August 15, 2014

New Filings

Zerto, Inc. filed IPR2014-01295 challenging U.S. Patent No. 7,971,091, assigned to EMC Corporation.

Rehearings

In CustomPlay, LLC v. Clearplay, Inc., IPR2014-00339, Paper 15 (August 15, 2014), the Board denied rehearing of its decision instituting inter partes review of claims 1, 2, and 4–9 of U.S. Patent No. 7,526,784.

 

Finding Evidence of Secondary Considerations

In Square, Inc. v. REM Holdings 3, LLC, IRP2014-00312, Paper 20 (Augist 14. 2014) the patent owner was seeking evidence of secondary considerations.  The Board denied additional discovery, but found that the patent owner made sufficient showing to entitle them to some information from Petitioner regarding sales figures.  A party seeking additional discovery must show more than a possibility or mere allegation that something useful will be found, but this does not meant that the requester must prove conclusively that they will win on the merits before any discovery will be granted.

The Board directed the parties to meet and confer on the issue of discovery and attempt to agree on a reasonable amount of information to produce. In the alternative, the Board said that petitioner may offer to stipulate to certain facts, such as sales figures, in order to avoid producing sensitive documents.  If the parties could not reach an agreement, the patent owner was authorized to renew the motion.

 

Beware the Death Squad

On August 14, 2014, Law360 quoted PTAB Chief Judge James Smith commenting that the Board’s reputation as a patent “death squad” – a phrase coined by former Federal Circuit Chief Judge Randall Rader.  While “death squad” is “unfortunate language,” in some ways it adequately describes the mission Congress gave the board under the AIA.  While the rate of declaration dropped from 87 percent in fiscal 2013, to 76 percent in fiscal 2014, the rate of filing continues ot increase.

 

August 14, 2014

New Filings

Merial Limited  filed IPR2014-01279 challenging U.S. Patent No. 8,501,799, assigned to VIRBAC.

Institution Decisions

In E Ink Corporation v. Research Frontiers Incorporated, IPR2014-00422, Paper 6 (August 14, 2014), the Board denied inter partes review of claims 1–12, 14–20, 22–27, and 29 of U.S. Patent No. 6,606,185.

Dispositions

In Coupa Software, Inc., v. Ariba, Inc., CBM2014-00061, Paper 16 (August 14, 2014) the Board terminated the proceeding on the joint motion of the parties.

Rehearing Decisions

In Netflix, Inc. v. OpenTV, Inc., IPR2014-00274, Paper 14 (August 14, 2104) the Board denied rehearing of its decision not to institute inter partes review of review of claims 1-20 of U.S. Patent No. 6,018,768.

 

The Inconsistency of Inconsistent Statements

In TD Ameritrade Holding Corp. v. Trading Technologies International, Inc., CBM2014-00131, Paper 11 (August 14, 2014), believing it caught Petitioner in a failure to disclose prior inconsistent statements, the Patent Owner sought “guidance” from the Board.  The Board merely reiterated the rule, directing the patent owner to 37 C.F.R. § 42.51(b)(1)(iii), which states “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency.”

Routine discovery under 37 C.F.R. §41.51(b)(1)(iii) is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced by that party in the proceeding, and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.”  Thus disclosure depends not only on the good faith of an opponent to make the disclosure, but to identify the inconsistency to begin with.

There is a duty to disclose inconsistent statements, but no real sytem to identify or enforce these disclosures.