Additional Discovery Relating to Real Party in Interest

In VMware, Inc. v. Good Technology Software, Inc., IPR2014-01324, Paper 11 (October 20, 2014), the Board allowed the patent owner to move for additional discovery regarding the real party in interest, one of the few topics where the Board allows discovery.  Similarly in General Electric Company v. TransData, Inc., IPR2014-01380, Paper 12 (October 20, 2010) the Board allowed the patent owner to move for additional discovery regarding the real party in interest.

October 20, 2014

New Filings

Nestle Healthcare Nutrition, Inc., filed IPR2014-00094 challenging claims 1, 2, 16-18, 26, and 27 of U.S. Patent No. 6,209,591 owned by Stork Food & Dairy Systems B.V.

Institution Decisions

In The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. America’s Collectibles Network, Inc., CBM2014-00119, Paper 10 (October 20, 2014) the Board instituted a covered business method patent review of claims 1–39 (all of the challenged claims) of U.S. Patent 8,370,211.

In Conopco, Inc, v, The Procter & Gamble Co., IPR2014-00628, Paper 21 (October 21, 2014) the Board denied inter partes review of claims 1–23 (all of the challenged claims) of U.S. Patent No. 6,649,155.

 

If at First You Don’t Succeed, Don’t Try, Try Again

In Conopco, Inc, v, The Procter & Gamble Co., IPR2014-00628, Paper 21 (October 21, 2014) the Board denied inter partes review of claims 1–23 (all of the challenged claims) of U.S. Patent No. 6,649,155.  The Board noted that it has discretion to decline to institute an inter partes review (35 U.S.C. § 314(a)), and that one factor it may take into account when exercising that discretion is whether “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. 325(d).  The Board compared the prior art and arguments raised in the instant petition to those raised in Conopco’s prior inter partes review petition, and determined that the petition raises “substantially the same . . . arguments” that “previously were presented to the Office” in the prior petition.  This was one of several circumstances that informed the Board’s decision to decline to institute review.

We double checked, and we were right!

Several of the Board’s decisions in inter partes reviews are now on appeal.  The statute specifically allows the Patent Office to intervene, which is bit like allowing a district court judge to intervene in the appeal of a DJ or infringement case.  The Office has intervened in several of the appeals, and in each one, has come to the astonishing conclusion that the Board got it right:

WHATARETHEODSS

In re Cuozzo Speed Technologies, 2013-1301; Helferich Patent Licensing v. CBS Interacative, 2104-1556; Softwview LLC v. Kyocera Corporation.  Well then, if everything is sound, I guess the Federal Circuit work is done!

How the Office’s participation will facilitate appellate review or advance the administration of justice remains to be seen.

Petitioner Can’t Stop Patent Owner from Getting More Patents

In A.C. Dispensing Equipment Inc. v. Prince Castle LLC, IPR2014-00511, Paper 18, (October 17, 2014), the Board denied petitioner authorization to file a motion to stay prosecution of Patent Owner’s continuation patent application.  The Board said that whether any of the claims in the patent will be canceled is an issue that is not yet decided and will not necessarily be decided until a final written decision is entered.  “To bar Patent Owner from prosecuting claims now that may be patentably indistinct from the claims under review thus would be premature.”  The Board said it was sufficient for Patent Owner to continue to take reasonable steps to apprise the Examiner of the status of this proceeding.

 

Spread Out! Double Space Everything

In Microsoft Corporation v. Cellular Communications Equipment LLC, IPR2015-00011, Paper 3, (October 17, 2014), the Board gave Microsoft’s petition a filing date but required Microsoft to re-file the Petition because it contained singled spacing.  In a clear breach of double spacing etiquette, the identification of claims challenged on pages 3-4 and a footnote on page 50 were single spaced.  Don’t interfere with the orderly review of patents — double space everything!

October 17, 2014

Institution Decisions

In First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, IPR2014-00715, Paper 9, IPR2014-00720, Paper 8 (October 17, 2014), the Board denied inter partes review as barred under 35 U.S.C. § 315(b), and for failure to name the real party in interest as required by 35 U.S.C. § 312(a).

In Ubisoft Entertainment SA v. Princeton Digital Image Corporation, IPR2014-00635, Paper 9 (October 17, 2014), the Board instituted inter partes review of claims 1–13, 15–18, and 21–23 of U.S. Patent No. 5,513,129 (but not as to challenged claims 14, 19, and 20).

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 1–11 and 33 (“the challenged claims”) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 12 and 13 (all of challenged claims) of U.S. Patent No. 7,604,716.

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 12 (October 17, 2014), the Board instituted inter partes review of claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00648, Paper 14 (October 17, 2014), the Board instituted inter partes review of 1, 2, and 5–8 (all of the challenged claims) of U.S. Patent No. 8,217,612.

In Webasto Roof Systems, Inc. v. UUSI, LLC, IPR2014-00650, Paper 14 (October 17, 2014), the Board instituted inter partes review of claims 1, 6–9, 11, 15, and 16 of U.S. Patent No. 7,579,802.

 

 

Joinder Decisions

The Gillette Company v. Zond LLC, IPR2014-00974, Paper 13 (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with Taiwan Semiconductor Manuf. Co. v. Zond, LLC., IPR2014-00807.

The Gillette Company v. Zond LLC, IPR2014-00973, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01100.

The Gillette Company v. Zond LLC, IPR2014-00972, Paper 12, (October 17, 2014), the Board granted Gillettes’ motion to join the proceeding with IPR2014-01099.

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Patent Owner Allowed to Request Discovery about Petitioner’s Testing

In Seoul Semiconductor Co., Ltd. v. Enplas Corporation, IPR2014-00605, Paper 13 (October 16, 2014), the Board authorized the Patent Owner to move for additional discovery about testing that Petitioner conducted .  The Board noted that “[u]nder 37 C.F.R. § 42.65(b), If a party relies on a technical test or data from such a test, the party must provide an affidavit explaining: (1) Why the test or data is being used; (2) How the test was performed and the data was generated; (3) How the data is used to determine a value; (4) How the test is regarded in the relevant art; and (5) Any other information necessary for the Board to evaluate the test and data.”  The Board settled the other discovery issues as it usually does, suggesting that the parties cooperate and authorizing the patent owner to again request permission to file another request for additional discovery.

October 16, 2014

Institution Decisions

In United States Endoscopy Group, Inc. v. CDx Diagnostics, Inc.,  IPR2014-00642, Paper 7 (October 16, 2014), the Board instituted inter partes review of claims 1-39 of U.S. Patent No. 6,258,044 (all of the challenged claims).

In IGB Automotive Ltd. v. Gentherm GmbH, IPR2014-00661, Paper 9 (October 16, 2014), the Board instituted inter partes review of claims 1, 3, 4, 6, 11, 13, 14, 16, 18, and 20 of U.S. Patent No. 7,735,932 (but not challenged claim 7).

In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims claims 14–18 and 25–32 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 11, (October 16, 2014), the Board instituted inter partes review of claims 19–24 (all of the challenged claims) of U.S. Patent No. 7,604,716.

In United States Postal Service v. Return Mail, Inc., CBM2014-00116, Paper 11 (October 16, 2014), the Board instituted covered business method review of claims 39–44 (all of the challenge claims) of U.S. Patent No. 6,826,548.

Dispositions

In Trulia, Inc. v. Zillow, Inc., CBM2013-00056, Paper 44 (October 16. 2014), the Board terminated the covered business method review on the joint motion of the parties.

Joinder Motions

In Toshiba Corporation v. ZOND LLC, IPR2014-01065, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00807.

In Toshiba Corporation v. ZOND LLC, IPR2014-01067, Paper 12, (October 16, 2014) the Board granted petitioner’s motion to join the proceeding with IPR2014-00808.

Rehearing

In Travelocity.com LP v. Cronos Technologies LLC, CBM2014-00082, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute covered business method review.

In Histologics, LLC v. CDx Diagnostics, Inc., IPR2014-00779, Paper 12 (October 16, 2014), the Board denied rehearing of its decision not to institute inter partes review.