On July 3, 2013, Three New IPR were Filed, Including One a Against a Reissued Patent; Board Deals with Idle Free Fallout; and the Board Clarifies that all Agreements Must be Disclosed to Terminate an IPR

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On July 3, 2013, Moore Rod & Pipe, LLC filed IPR2013-00418 against U.S. Patent No. RE36362 on Polymer Liners in Rod Pumping Wells; Sony Corporation filed IPR2013-00326 against U.S. Patent No. 6,665,003 on System and Method for Generating and Displaying Panoramic Images and Movies, and IPR2013-00327 against U.S. Patent No. 7,477,284 on System and Method for Capturing and Viewing Stereoscopic Panoramic Images.

In Nichia Corp. v. Emcore Corp., IPR2012-00005 (JYC), Paper 30 (July 3, 2013), the Board denied Emcore’s motion to file a second motion to amend in view of Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB, Jun. 11, 2013).  The Board indicated that Emcore was free to argue that the Idle Free Systems decision should not be applied literally to its motion to amend, as it did not have the benefit of the guidance set forth in that decision before filing its motion to amend.

In Hyundai Motor America, Inc., v. Clear with Computers, LLC, IPR2013-00104, Paper 16, and IPR2013-00176, Paper 17 (July 23, 2013), before terminating the two IPRs broughat against U.S. Patent No. 8,121,904 the Board required the parties to certify in writing that there are no other written or oral agreements or understandings,including any collateral agreements, between them, including but not limited to, licenses, covenants not sue, confidentiality agreements, or other agreements of any kind, that are made in connection with, or in contemplation of, the termination of the IPR Proceedings.  The Board also required the Patent Owner to indicate whether there were any other pending infringement suits involving the patent.  In contrast the same day, the Board granted a motion to terminate in CBS Interactive, Inc. v. Helfrich Patent Licensing, LLC, IPR2013-00033 (JYC), Paper 60 (July 3, 2013), where the parties submitted their settlement agreement, and moved pursuant to 37 C.F.R. § 42.74(c), that the settlement agreement be treated as business confidential information and be kept separate from the files of the patent.

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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.