April 30, 2014

Instituton Decision

Ossur Americas, Inc. v. Otto Bock Healthcare LP, IPR2014-00145, Paper 15 (April 30, 2014), the Board instituted inter partes review of  claims 1-7, 10-13, and 16-23 of U.S. Patent No. 6,726,726.

Final Written Decision

Arthrex, Inc. v. Bonutti Skeletal innovations LLC, IPR2013-00631, Paper 22 (April 30, 2014), the patent owner disclaimed claims 64, 65, 67, 69, 70, 72–76, 80, 82, and 83 in U.S. Patent No. 5,921,986, and the Board terminated the inter partes review.

Linvatech Corporation v. Bonutti Skeletal Innovations LLC, IPR2013-00624, Paper 27 (April 30, 2014),  the Board terminated in the inter partes review on the joint motion of the parties.



April 28, 2014

Institution Decision

Twitter, Inc.v. Evolutionary Intelligence LLC, IPR2014-00092, Paper 12 (April 28, 2014), the Board denied institution of inter partes review of claims 1-16 of U.S. Patent No. 7,010,536.


No Appeal of a Decision Not to Institute an IPR

In St. Jude Medical Cardiology Division, Inc., v. Volcano Corp., 2014-1183 (April 24, 2014), an appeal of the denial of inter partes review in IPR2013-00258, the Federal Circuit held that a decision not to institute is not appealable:

We hold that we may not hear St. Jude’s appeal from the Director’s denial of the petition for inter partes review. We base that conclusion on the structure of the inter partes review provisions, on the language of section 314(d) within that structure, and on our jurisdictional statute read in light of those provisions.


The Continuing Problem of Replies Exceeding Their Proper Scope

In Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper 27, and IPR2013-00277 (April 23, 2014), the Board again dealt with a patent owner’s motion to strike a petitioner’s reply that the patent owner believes exceeds the scope of petition.  The Board reminded patent owners that it determines whether a Reply and accompanying evidence are outside the scope of a proper Reply and evidence when the parties’ briefs are reviewed and the final written decision is prepared. If there are improper arguments and evidence presented with a Reply, the Board may strike portions or the entirety of the Reply and exclude related evidence. The Board said that it takes under consideration any alleged violations in due course, upon considering the record at the end of the trial.

The Board does not seem to understand that it is not fair to a patent owner not to know what issues are or are not in play at the Oral Hearing, which is why patent owners continue to try to file a motion to strike.

The Board points out that in addition to a motion to exclude, the patent owner can also cross-examine the petitioner’s witnesss, and file a motion for observation on cross-examination, but should a patent owner be put to these steps if the testimony is beyond the proper scope to begin with?

The issue arose a few days earlier in Microsoft Corporation v. Surfcast, Inc., IPR2013-00292 (April 21, 2014) where the patent owner sought permission to file a sur-reply to address what it beleived were improper evidence and arguments in petioner’s reply.  Again the Board said that it would exclude what should be excluded, but again this does not help the patent owner in the oral argument.

April 23, 2014

New Filings

Petroleum Geo-Services, Inc. filed IPR2014-00678 challenging claim 14 U.S. Patent No. 6,6691,028, assigned to Westerngeco, LLC.

 Final Decisions

In Globus Medical, Inc. v. Altus Partners, LLC, IPR2014-00429 , Paper 10 (April 23, 2014) the Board terminated the trial pursuant to the joint motion of the parties, noting that the patent owner had not yet filed its preliminary statement, and that the litigation between the parties had been resolved.


April 22, 2014


In Experian Marketing Solutions, Inc. v. RPOST Communications, Limited, CBM2014-00010, Paper 20 (April 22, 2014), the Board denied covered busienss method review of claims 1-11 of U.S. Patent No. 8,224,913 because the petitioner failed to demonstrate that the claimed subject matter is not a technical invention.

In Experian Marketing Solutions, Inc. v. RPOST Communications, Limited, CBM2014-00017, Paper 21 (April 22, 2014), the Board denied covered busienss method review of claims 1-16 of U.S. Patent No. 8,209,389 because the petitioner failed to demonstrate that the claimed subject matter is not a technical invention.

Even Limited Discovery Remains Elusive

In GEA Process Engineering, Inc. v. Steuben Foods, Inc., IPR2014-00041,Paper 23;  IPR2014-00043, Paper 25; IPR2014-00051, Paper 22; IPR2014-00054, Paper 19; IPR2014-00055, Paper 15 (April 22, 2014), the board denied patent owner’s request for additional discovery regarding the real party in interest, finding that the patent owner had not met the burden of proving what the requested discovery would prove.

However, in Unified Patents, Inc. v. Clouding IP, LLC, IPR2013-00586, Paper 12 (April 22, 2014), the patent owner sougth to propound five interrogatories about the real party in interest.  The Board appeared include to allow the discovery in view fo the information the patent owner was able to muster, but wanted to see the five interrogatories first.

The Board flatly rejected the petitioner’s argument that the right to discovery was waived since the patent owner did not seek it prior to institution, noting that: “Not having asked for additional discovery prior to institution of trial does not waive Patent Owner’s opportunity to ask for additional discovery after institution of trial.”

Board Invalidates Design Patent

In Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd., IPR 2013-00072, Paper 28 (April 28, 2014), the Board invalidated U.S. Patent No. D617,465. The Petition argued that the patent was not entitled to its priority date because of differences between the design patent drawings and the utility patent drawings from which it claimed priority, and thus an intervening reference anticipated or made obvious the claim:









The intervening prior art reference on the left is very similar to Fig. 1 of the patent. In response, the patent owner tried to revive its priority claim by amending the design patent claim (i.e., the drawings) to look more like the drawings in the utility patent priority application:



.  However, the Board determined that the amendment broadened the claim, and was thus inpermissable.  Unable to keep its priority claim, the intervening reference was very compelling, and the claim was cancelled.




April 21, 2014

Decisions Denying Inter Partes Review

in Loral Space & Communications, Inc., v. Viasat, Inc., IPR2014-00236, IPR2014-00239, IPR2014-00240, Paper 7, (April 21, 2014), the Board denied inter partes review in the cases, finding that they they were all filed too late (35 USC 315(b), 37 C.F.R. § 42.101(b)).  The Board rejected arguments that the bar does not apply to pre-enactment activities; that the bar does not apply because the complaints were amended within the one year bar period; and because the petitioner were filed within one year of the service of a complaint.

Institution Decisions
In Honeywell International, Inc. v. International Controls and Measurements Corporation, IPR2014-00219 (April 21, 2014), the Board instituted an inter partes reviewl of claims 1-6 (all of the challenged claims) of U.S. Patent No. 6,222,719.

No Take-Backs

Microsoft Corporation v. Surfcast, Inc., IPR2014-00271, Paper 18 (April 21, 2014) the Board denied petitioner’s motion to wtihdraw its motion for joinder of the proceeding with IPR2013-00292, apparently in addition to getting the Board’s permission to bring a motion, you likewise need permission to withdraw one!

IPR2014-00271 is like a chess game.  After having grounds in IRP2013-00292 denied as redundant, Microsoft requseted reconsideration, and presented the “redundant” grounds separately in IPR2014-00271, and asking that they be joined.  The Patent Owner opposed the motion.  The strategically, petitioner decided it wanted to withdraw the Motion for Joinder, and the patent owner is opposed the withdrawal.