June 30, 2014

Institution Decisions

In Panel Claw, Inc. v. SunPower Corporation, IPR2014-00388, Paper 10, June 30, 2014), the Board instited inter partes review of claims 1, 55, 56, 78, and 79, but not with respect to claims 17, 18, 36, 38–40, 58, 59, 61– 63, 65, 66, 71–73, and 76 of U.S. Patent No. RE38,988.

In MediaTek Incorporated v. Netvinci, Inc., IPR2014-00328, Paper 24 (June 30, 2014), the Board denied inter partes review of claims 1-16 (the “challenged claims”) of U.S. Patent No. 6,601,126.

FInal Written Decision

In Redline Detection, LLC v. Star EnviroTech, Inc., IPR2013-00106, Paper 66 (June 30, 2014), the Board  found that claims 9 and 10 of Patent No. US 6,526,808 (all of the challenged claims) were not unpatentable.


June 27, 2014

New Petitions Filed

Apple, Inc., filed IPR2014-01032 challenging U.S. Patent No. 5,590,403 assigned to Bell Industries, Inc.

Apple, Inc., filed IPR2014-01033 challenging U.S. Patent No. 5,894,506 assigned to Skytel Communications, Inc.

Apple, Inc., filed IPR2014-01034 challenging U.S. Patent No. 5,894,506 assigned to Skytel Communications, Inc.

Apple, Inc., filed IPR2014-01035 challenging U.S. Patent No. 5,659,891assigned to Newcastle Partners, L.P.

Apple, Inc., filed IPR2014-01036 challenging U.S. Patent No. 5,915.210 assigned to Mobile Telecommunication Technologies.

Global Foundries U.S., Inc. filed IPR 2014-01042 challenging U.S. Patent No. 7,808,184 assigned to Zond, Inc.

Inspectionlogic Corp., filed IPR 2014-01044 challenging U.S. Patent No. 7,657,384, assigned to LDARtools, Inc.

Nautique Boat Company, Inc. filed IPR2014-01045 challenging U.S. Pat. 8,539,897.

Renesas Electronics Corporation filed IPR2014-01046  challenging U.S. Patent No. 6,853,142 assigned to Zond, Inc.

GlobalFoundries U.S., Inc. filed IPR2014-01047 challenging U.S. Patent No. 7,147,759 assigned to Zond, Inc.

Artsana USA, Inc. filed IPR2014-01043 challenging U.S. Patent No. 8,388,501, assigned to Kolcraft Enterprises, Inc.

Hamilton Storage Technologies, Inc. filed IPR2014-01054 challenging U.S. Patent No. 6,467,285 assigned to the University of Virginia.

Renesas Electronics Corporation filed IPR2014-01057 challenging U.S. Patent No. 6,853,142 assigned to Zond, Inc.

Hamilton Storage Technologies, Inc. filed IPR2014-01058 challenging U.S. Patent No. 6,581,395.

GlobalFoundries U.S., Inc. filed IPR2014-01059 challenging U.S. Patent No. 7,147,759 assigned to Zond, Inc.

Hamilton Storage Technologies, Inc. filed IPR2014-01060 challenging U.S. Patent No. 6,888,123.

Hamilton Storage Technologies, Inc. filed IPR2014-01062 challenging U.S. Patent No. 6,941,762.








June 26, 2014

New Petitions Filed

Taiwan Semiconductor Manufacturing Company, Ltd. filed IPR2014-01038 challenging U.S. Patent No. 8,635,583.

RPC Formatec GmbH filed IPR2014-01040 challenging U.S. Patent No. 8,505,773.

Metrics, Inc. filed IPR2014-01041 challenging U.S. Patent No. 8,129,431 assigned to Senju Pharaceutical Co., Ltd.

Metrics, Inc. filed IPR2014-01043 challenging U.S. Patent No. 8,669,290.



Intitution Decision

In Chrysler Group LLC v. Norman IP Holdings, LLC, IPR2014-00560 (June 26, 2014), the Board terminated the inter partes review  based upon the settlement of the parties.

June 24, 2014

New Petitions

SanDisk Corporation filed IPR2014-01029 challenging U.S. Patent No. 8,516,185 assigned to DBD Credit Funding LLC.

Taiwan Semiconductor Manufacturing Company, Ltd. filed IPR2014-01030 challenging U.S. Patent No 5,652,084 assigned to Fortress Credit Co., LLC


Hyundai Mobis Co., Ltd. filed IPR2014-01005 challenging U.S. Patent No. 7,347,450 assigned to Autoliv ASP, Inc.

Hyundai Mobis Co., Ltd. filed IPR2014-01006 challenging U.S. Patent No. 7,614,653 assigned to Autoliv ASP, Inc.





Mandatory Discovery is Only for Information Shown to be Inconsistent

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097, Paper 16 (June 23, 2014) the patent owner sought mandatory discovery of the prosecution history of an abandoned patent appliaction by petitioner, arguing that petitioner made arguments about the prior art that were inconsistent with its interpretation of the prior art in the Petition.  Petitioner objected that the information had previously been produced in a lawsuit between the parties, and that it was unduly burdensome to produce it again.  The Board sidestepped the question finding that there was no proof that there were inconsistent statements, and thus the discovery was not mandatory discovery.  The Board instructed the Patent Owner to investigate other methods of obtaining the information it seeks, including a review of the documents produced in the related litigation, to the extent permitted. If, after doing so, Patent Owner is unable to obtain the necessary information, Patent Owner is authorized to file a motion for additional discovery under 37 C.F.R. § 42.51(b)(2).

BRI = Ordinary Meaning, II

In Square, Inc. v. J. Carl Cooper, IPR2014-00157, Paper 17 (June 23, 2014), the Board concluded that in view of the patent expiration, the claims can no longer be amended, and thus they should be constructed according to their ordinary meaning. However, the Board concluded that the application of the Phillips standard did not change the construction of (1) “universal credit card/universal credit card apparatus”; (2) “transducer”; (3) “host system”; and (4) “emitter” as set forth in the Decision to Institute Review.  Yet again indicating that the broadest reasonble construction is often the ordinary meaning.


June 23, 2014

Institution Decisions

Johnson Controls, Inc. v Wildcat Licensing WI, LLC, IPR2014-00305 (June 23, 2014), the Board instituted an inter partes review of claims 22-28 of U.S. Patent No. 7,062,831.

June 6, 2014

New Petitions

Wright Medical Technology, Inc., filed  IPR2014-00908 challenging U.S. Patent No. 6,440,138 assigned to ORTHOPHOENIX, LLC

Intel Corporation filed IPR2014-00910  challenging U.S. Patent No. 8,595,546 assigned to ZETTASET, INC.

Cisco Systems, Inc.filed IPR IPR2014-00911 challenging U.S. Patent No. 8,134,917 assigned to Constellation Technologies LLC

Wright Medical Technology, Inc., filed IPR2014-00912 challenging U.S. Patent No. 6,863,672 assigned to ORTHOPHOENIX, LLC

Intel Corporation filed IPR2014-00910 challenging U.S. Patent No.6,805,779 assigned to Zond, Inc.

Cisco Systems, Inc. filed IPR2014-00914 challenging U.S. Patent No. 8,464,299 assigned to Constellation Technologies LLC.

Institution Decisions

Syntroleum Corporation v. Neste Oil Oyj, IPR2014-00192, Paper 18 (June 6, 2014) the Board  instituted Inter Partes Reviwe of claims 1-24 (all of the claims) of U.S. Patent No. 8,278,492.

RPX Corporation v. VirnetX Inc., IPR2014-00176, denied Inter Partes Review of U.S. Patent No. 7,418,504, in a confidential dcision.

Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations LLC, Paper 11, (June 4, 2014)denied Inter Partes Review of claims 1, 7, 8, 11, 12, 15, 16, and 30-39 of U.S. Patent No. 7,959,635.

Termination Decisions

CLICK4CARE, INC. v. My Health Inc., IPR2014-00435, Paper 11 (June 6, 2014) the Board terminated the inter partes review on the joint motion of the parties.




Issues of Exceeding the Proper Scope Continue to Plague the Board

In Ariosa Diagnostics, Inc. v. The Board of Trustees of the Leland Stanford Junior University,  IPR2013-00308, Paper 27 (June 6, 2014) another patent owner was complaining that the Petitioner  had exceeded the proper scope in its reply.  The Board “noted that we understood Patent Owner’s frustration and concern” but reiterated that it will sort out the proper from the improper when making the final written decision.”  In response to the argument that the Board cannot “unread” the improper material, the Board reminde the patent owner that the Board is comprised of “persons of competent legal knowledge and scientific ability,” fully capable of disregarding the portions of the record it is excluding.