Board Declines to Limit Cross Examination

In International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-00587, Paper 27 (November 28, 2014), the Board declined to limit the scope of the patent owner’s cross-examination of petitioner’s witness.  Petitioner sought to limit cross examination only to the grounds instituted by the Board.  The Board noted that the scope of cross examination is normally limited to the scope of the direct examination. 37 C.F.R. § 42.53(d)(5)(ii). While the Board agreed that the most pertinent portions of the direct testimony may be related to the instituted ground, it was not persuaded that the remaining portions would not be relevant. The testimony could be relevant to the state of the prior art or the credibility of the declarant, and therefore the Board declined to further limit the scope of cross-examination.

Supplemental Evidence

In Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 (November 28, 2014), the Board denied petitioner’s motion to file as supplemental information under 37 C.F.R. § 42.123(a) declarations used in two subsequently filed inter partes reviews by third parties.

The Board found that petitioner met the criteria set forth in §42.123(a), noting that petitioner filed its request for authorization to file a Motion to Submit Supplemental Evidence within one month of the date of institution, and the patent owner did not dispute that the declarations are relevant to a claim for which the trial has been instituted.  However, the Board said that meeting §42.123(a) does not mean that the Board will automatically grant that motion, and allow submission of the supplemental information at issue, citing Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, (August 5, 2013); ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00139, (July 30, 2013); Norman Int’l, Inc. v. Andrew J. Tosti Testamentary Trust, Case IPR2014-00283, slip op. at 5 (PTAB Sept. 29, 2014).

The Board has allowed submission of supplemental information where the information was alleged to confirm the public accessibility of originally cited prior art, but did not change the grounds of unpatentability authorized in the proceeding, and did not change the evidence initially presented in the petition to support those grounds. Palo Alto v. Juniper, IPR2013-00369, (February 5, 2014).  However, the Board has denied motions to supplement where the petitioner sought to use the supplemental information to bolster the challenges presented in the petition.  ZTE v. Contentguard Holdings, IPR2013-00139, (July 30, 2013)(denying entry of supplemental information where petitioner submitted information in response to claim construction by Board in institution decision); Redline Detection v. Star Envirotech, IPR2013-00106, (August 5, 2013) (“We do not read 37 C.F.R. § 42.123 as permitting a petitioner to wait for the Board to narrow the grounds submitted in the petition in order to create a more focused declaration at less expense that will bolster its position in the chosen grounds.”).

Denying entry of supplemental information which effectively changes the evidence originally relied upon in a petition is in accord with the statutory requirement that a petition must identify, with particularity, the evidence supporting the challenge to each claim.   The Board found that admitting the declarations would change the evidence relied upon in the petition, and therefore denied the motion to submit supplemental information.



Motion to Strike vs. Motion to Exclude

In Johnson Controls, Inc. v. Wildcat Licensing WI, LLC, IPR2014-00304, Paper 23, IPR2014-00305, Paper 24 (November 28, 2014), the Board denied petitioner leave to file a motion to strike exhibits from the patent owners response because the exhibits contained attorney argument, and thus were an attempt to avoid the page limit.  Because all of the information in the Exhibit appeared elsewhere in patentees papers, and petitioner timely served objections in accordance with 37 C.F.R. § 42.64(a)(1), preserving petitioner’s ability to file a motion to exclude, the Board saw no reason to allow a motion to strike the exhibit.


November 28, 2014

Institution Decisions

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00789, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–9 (all of the challenged claims) of U.S. Patent No. 6,738,155..

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00790, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 1–3 (all the challenged claims) of U.S. Patent No. 6,611,349.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2014-00791, Paper 9 (November 28, 2014), the Board instituted inter partes review of claims 10–14 of U.S. Patent No. 6,611,349 (but not challenged claims 4-9).

In Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00958, Paper 11 (November 28, 2014), the Board denied inter partes review of claims 1–17 of U.S. Patent No. 5,602,831.






One Page, Double-Spaced Fourteen Point Type

In Valeo, Inc. v. Magna Electronics Inc., IPR2014-01208, Paper 11 (November 26, 2014), the Board gave the patent owner an entire page to respond to petitioner’s brief on the issue of real party interest.  The patent owner wanted to identify previous Board rulings pertinent to the issue and include relevant filings by petitioner — hopefully one page (excluding heading and signature block — will be enough to get this done.

Considering that patent owner had to set up and participate in a conference call, one wonders whether the burden to get this one page was worth it.


Correcting the Petition

Silicon Laboratories, Inc. v. Cresta Technology Corporation, IPR2014-00809, paper 28 (November 26, 2014), the  Board allowed the Petitioner to file a corrected Petition and Exhibit under 37 C.F.R. § 42.104(c), and based upon the corrected Petition and exhibit, added a claim to the inter partes review.  The Board instituted inter partes review for less than all of the challenged claims, and the petitioner sought hearing after discovering a clerical error in the petition and the exhibit.  However the Board pointed out that rehearing was not the appropriate remedy, rather petitioner should have sought to correct the petition (rehearing of the uncorrected erroneous petition would reach the same result).

Petitioner filed a motion to amend the petition and exhibit, and despite patent owners objections, the Board agreed that it was a clerical error that caused the petition and expert declaration to cite to the wrong portions of the prior art.  The Board allowed the amendment, and altered its institution decision to include an additional claim.


Not So Fast

MotionPoint Corporation v. TransPerfect Global, Inc., CBM2014-00060, Paper 27 (November 26, 2014) the Board denied petitioner’s motion to expedite the proceedings, finding that further acceleration would prejudice the patent owner.

November 26, 2014

Institution Decisions

In CAO Group, Inc. v. The Procter & Gamble Company, IPR2-14-00796, Paper 18 (November 6, 2014), the Board denied inter partes review of  claims 1 to 13 of U.S. Patent No. 5,989,569.

In Global Tel*Link Corporation v. Securus Technologies, Inc., IPR2014-00810, Paper 8 (November 26, 2014) the Board instituted inter partes review of claims 1–8 of U.S. Patent No. 7,324,637.

In Eastman Kodak Company v. CTP Innovations, LLC, IPR2-14-00788, Paper 9 (November 26, 2014) the Board instituted inter partes review of  claims 10–20 (all of the challenged claims) of U.S. Patent No. 6,738,155.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00834, Paper 9 (November 26, 2014), the Board instituted inter partes review of 1–5 and 8 of U.S. Patent No. 8,482,274.

In L-3 Communications Holdings, Inc. v. Power Survey LLC, IPR2014-00836, Paper 9 (November 26, 2014), the Board instituted inter partes review of claims 1–5 and 8 of U.S. Patent No. 8,536,856.

In Nautique Boat Company, Inc. v. Malibu Boats, LLC, IPR2014-01045, Paper 13 (November 26, 2014), the Board instituted inter partes review of claims 1–5, 8–11, 13–16, and 18–20 of U.S. Patent 8,539,897 (but not challenged claims 6-7, 12, and 17).


In Panasonic System Networks Co., Ltd. v. 6115187 CANADA INC., IPR2014-01438, Paper 11 (November 26, 2014), the Board terminated the inter partes review on the joint motion of the parties.