Additional Discovery Denied for Failure to Meet Garmin Factors

Seoul Semiconductor Co., Ltd v. Enplas Corporation, IPR2014-00605, Paper 17, (November 5, 2014), the Board  denied patent owners motion for additional discovery which exceeded the scope of the Board’s authorization.  The Board further warned the parties that  future violation of our prohibition against unauthorized motions shall be subject to sanctions.

As to the discovery that the Board did authorize, the Board found patent owner’s application of the Garmin Factors deficient.  The Board found that the Patent Owner failed to meet the first factor by filing tow show beyond speculation that something useful will be discovered.  The Board further found that patent owner was asking for information that it could reasonable figure or assemble on its own in violation of the third factor.  Lastly the Board found that the requests were not sensibly and responsibly tailored to a genuine need as required by the fifth Garmin factor.

 

Board Rejects Attempt to Supplement Petition

In PNC Bank, N.A. v. SECURE AXCESS, LLC, CBM2014-00100, Paper 18 (November 5, 3014), the Board denied petitioner authorization to file a motion to submit supplemental information to enter five to six new references in the record of the proceeding.  The petitioner acknowledged that each of the new references was available publically prior to the filing of the Petition, and that Petitioner could have discovered the references had it used the alternate search strategy. The Board was not persuaded that Petitioner could an sufficiently establish “why the supplemental information could not have been obtained earlier.” 37 C.F.R. § 42.223(b).

 

November 5, 2014

New Filings

Unified Patents Inc. filed IPR2015-000232 challenging U.S. Patent No. 7,702,781, assigned to Teoco Corporation.

Institution Decisions
In BioDelivery Sciences International, Inc. v. MonoSol Rx, LLC, IPR2014-00794, Paper 7 (November 5, 2014), the Board denied inter partes review of claims 1–29 of U.S. Patent No. 8,652,378.

Dispositions

In Dyaco International Inc.v. Johnson Health Tech. Co., Ltd., IPR2013-00754, Paper 8 (November 5, 2014), the Board terminated the inter partes review on the joint motion of the parties, before trial was instituted.

In CustomPlay, LLC v. Clearplay, Inc., IPR2013-00484, Paper 29 (November 6, 2014), the Board issued a Final Written Decision that claims 16, 27, 28, 30–34, and 40 of U.S. Patent No. 7,577,970 we not show to be invalid.

 

 

 

 

 

 

Amendment of a Petition Denied, Although it May Be Possible

In National Environmental Products Ltd. v. Dri-Steem Corporation, IPR2014-01503, Paper 11 (November 4, 2014), the Board denied the petitioner’s request to file an amended petition. The Board noted that it’s procedures for amendment of a Petition typically are limited to correction of a clerical or typographical mistake. 37 C.F.R. § 42.104(c). Nevertheless, the Board may determine a proper course of conduct in a proceeding for any situation not specifically covered by the applicable rules. However, the Board was not persuaded, Petitioner should be authorized to submit the proposed supplemental information in a revised Petition.

The Board said that the original petition should have included all of the asserted grounds of unpatentability. 37 C.F.R. § 42.104(b). The Board said that the law requires that a petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3). The Board found that the Petitioner did not explain sufficiently during the call why the information was not include in its petition.

November 4, 2014

Institution Decisions

In Brainlab AG v. Sarif Biomedical LLC, IPR2014-00753, Paper 10 (October 4, 2014), the Board instituted inter partes review of claims 10–11 of U.S. Patent No. 5,755,725 (but not as to challenged claims 1-9.

In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00723, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1, 2, 5–8, 15–19, 22, 23, 25–27, 30–31, 34–37, and 44–46 of U.S. Patent No. 8,214,873.

In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00711, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 10–12 of U.S. Patent No.8,230,099 (but not challenged claim 1).

In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00709, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1–5, 10, 11, 13, 14, and 16–18 of U.S. Patent No. 8,028,323.

.In Samsung Electronics Co., Ltd. v. Black Hills Media, LLC, IPR2014-00740, Paper 7 (November 4, 2014), the Board instituted inter partes review of claims 1–3, 9–11 and 14 of U.S. Patent No. 8,045,952  (but not challenged claims 4 and 12).

.Dispositions

In Taiwan Semiconductor Manufacturing Company, Ltd. v. Ziptronix, Inc., Paper 19 (November 4, 2014), the Board granted patent owner’s request for adverse judgment for under 37 C.F.R. § 42.73(b) with respect to claims 1-14 and 53-60 of U.S. Patent No. 6,563,133.

In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00362, Paper 41 (November 4, 2014), the Board issued a Final Written Decision that claims 1–3, 8–12, 16–20, 23–26, and 29–33 (all of the challenged claims) of U.S. Patent No. 7,348,575 were unpatentable.

In Carl Zeiss SMT GmbH v. Nikon Corporation, IPR2013-00363, Paper 34 (November 4, 2014), the Board issued a Final Written Decision that claims 55–67 (all of the challenged claims) of U.S. Patent No. 7,348,575 were unpatentable.

Rehearing Decisions

Iron Dome LLC v. Chinook Licensing DE, LLC, IPR2014-00514, Paper 12 (November 4, 2014) the Board denied petitioner’s request for rehearing of the decision not to institute inter partes review.

November 3, 2014

Dispositions

In Polaris Wireless, Inc. v. TruePosition, Inc., IPR2013-00323, Paper 62 (November 3, 2014), the Board issued a Final Written Decision holding that claims 111–114 of U.S. Patent No. 7,783,299 B2 are unpatentable.