March 31, 2014

Trials Terminated

The Board issued a final judgment terminating the proceedings in InvenSense, Inc. v. STMicroelectronics, Inc., IPR2013-00241 (March 31, 2014), in veiw of the Settlement reached by the parties.  The Board noted that the Petitioner had not yet responded to the motion to amend, and there were no other proceedings involving the patent.

Just Another Word, Please

Decisions Denying Extra Pages

Motion to Amend

Riverbed Technology Inc. v Silver Peak Systems, Inc., IPR2013-00402, Paper 24 (March 27, 2014) [5 extra pages in the Motion to Amend]

Riverbed Technology Inc. v Silver Peak Systems, Inc., IPR2013-00403, Paper 24 (March 27, 2014) [5 extra pages in the Motion to Amend]

Petitioner Reply

Oracle Corporation v. Click-to-Call Technologies LP, IPR2013-00312, Paper 42 (March 27, 2014) [3 extra pages in the reply]


Board Lets Patent Owner File A Surreply.

In Zodiac Pool Systems, Inc.v. Aqua Products, Inc., IPR2013-00159, Paper  51 (March 28, 2014), the Board allowed the patent owner to file a total of five pages to address the absense of secondary considerations raised by by Petitioner in its reply.  The patent owner complained ot the Board that it was denied discovery on secondary considerations.  The Board urged the parties to discusse further production, and after receiving additional documents the patent owner requested leave to file a surreply to discussse the commercial success of the ivnention, which the Board, granted.

March 28, 2014

New Filings

Dorman Products, Inc. filed IPR2014-00555 against U.S. Patent No. D526429 on a Surface Configuration of Truck Headlamp.

Final Decisions

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00412, Paper 39 (March 28, 2014). The Board granted the parties joint motion to terminate in veiw of their settlement.  The Board noted that the patent owner hat not yet filed its response, and found it appropiate to termiante the proceeding witout a written opinion, even though there was pending litigaiton invovling the patent and other parties who did not file their own Petition or attempt to joint the current inter partes review.

Trials Instituted

The Board instituted an IPR in Linvatec Corporation v. Bonutti Skeletal innovations LLC, 2013-00628, Paper 8 (March 28, 2014) as to claims 1 and 4–7 (all the challenged claims) of U.S. Patent No. 5,527,343.

The Board is Hesitant to Stay Proceedings

In International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049, CBM2013-00050, and CBM2013-00051, Paper 19, (March 28, 2014), the Board declined to stay there covered business method reviews so that they might be synced up with three inter partes reviews.   The Board noted that if the inter partes reviews weren’t instituted, alot of time would be wasted, and if they were instittued, the resulting schedule woudl make it difficult for the Board to render a final written decision within one year of the institution of the covered business method reviews.



Petiioner Can Submit Supplemental Information Challenging Additional Claims

In Callidus Software Inc. v. Versata Software, Inc., CBM2013-00052, Paper 26, CBM2013-00053, Paper 21, CBM2013-00054, Paper 24 (March 28, 2014), Petitioner sought to file supplemental infomration to challenge dependent claims not challenged in the Petitions. The Board determined that considering the supplemental information would not be in the interests-of-justice, because it would create a trial within a trial, requiring briefing by the Petitioner, an opposition by the Patent Owner, and a reply by Petitioner. Moreover, there would need to be time to allow for cross-examination of any witness providing testimony as to the issues raised. All of this would impact the current schedule, and would not lead to a just, speedy, and inexpensive proceeding pursuant to 37 C.F.R. § 42.1(b).  The Board noted that Petitioner could still file new petitions raising the new issues.

March 27, 2014

Final Written Decisions

The Board issued a final written decision in Kyocera Inc. v. Softview LLC, IPR2013-00004 and Case IPR2013-00257, Paper 53 (March 27, 2014) finding claims 30, 31, 40, 41, 43, 52, 55, 59, 72, and 75 (all of the challenged claims) of U.S. Patent No. 7,831,926 are unpatentable under 35 U.S.C. § 103.

The Board issued a final writen decision in Microstrategy, Inc. v. Zillow, Inc., IPR2013-00034, Paper 42 (March 27, 2014), finding claims 2, 5-11, 13-17, 26, 28-33, 35-37, 39, and 40 unpatenable, but finding claims12, 27, 34, and 38 of U.S. Patent No. 7,970,674 patentable.  Petitioner had originally sought review of all 40 claims, but trial was only instituted as to 2, 5-17, and 26-40.


Petioner’s Reply May Only Respond to the Patent Owner’s Arguments

In Amkor Technology, Inc. Tessera, Inc. IPR2013-00242, Paper 106 (March 27, 2014) the Board authorized the patent owner to file a Motion to Strike the petitioner’s reply on the grounds that it contained new matter.  A reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012).

The Board found that the patent owner has made a threshold showing that petitioner in its reply is relying on a different embodiment of the reference from that which was relied on in the petition, adn thus briefing from the parties is warranted to determine whether the reply arguments properly respond to Patent Owner‟s response.

No Relief for Patent Owners

In Riverbed Technology, Inc. v. Silver Peak Systems, Inc., IPR2013-00402, IPR2013-00403 Paper 22, (March 27, 2014), the Patent Owner also requested five additional pages for each of its motions, arguing that its proposed substitute claims occupy a significant portion of the 15 pages allotted. The Petitioner did not oppose Patent Owner’s request, but the Board nevertheless denied it, saying:

We do not view the issues involved in these proceedings to be overly complex, or the claims to be so voluminous, such that it would be unreasonable for Patent Owner to meet the 15-page limit for motions to amend. See 37 C.F.R. § 42.24(a)(1)(v). Patent Owner is encouraged to propose focused amendments for a limited set of claims and use the bulk of its motion to explain why the motion should be granted.

Whether or not the amendments are focused does not really address the patent owner’s plight that reproducing the text of the claims takes up a substantial portion of the allotted fifteen pages.  Also, whether or not the Board sees the issues as complex, the fact remains that 15 pages has not been enough for a single patent owner to success in amending even one claim.

March 26, 2014

Institution Decisions

The Board instituted an inter partes review in Apple Inc. v. PersonalWeb Technologies, LLC., IPR 2013-00596, Paper 9 (March 26, 2014) of claims 24, 32, 70, 81, 82, and 86 (all of the challenged claims) of U.S. Patent No. 7,802,310.

The Board instituted an inter partes review in Laird Technologies, Inc., v. GrafTech International Holdings Inc., IPR2014-00023, Paper 11 (March 26, 2014) of claims 1, 2, 21-24, and 26-29 of U.S. Patent No. 6,482,520.