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Recent Decisions (click on a decision to view the annotation)

PTAB Digest

Ex Parte Man Machine Interface Techs.

Federal Circuit vacated Board's claim construction, provided new construction, reversed Board's anticipation decision and remanded for decision on obviousness under new construction.
PTAB Digest Informative

IBG LLC, INTERACTIVE BROKERS LLC, TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC., TRADESTATION TECHNOLOGIES, INC., and IBFX, INC., v. TRADING TECHNOLOGIES INTERNATIONAL, INC.,

The proponent of testimony, including a declaration or affidavit offered in a prior proceeding, must make the declarant available for deposition as part of routine discovery under 37 C.F.R. § 42.51(b)(1).
PTAB Digest Informative

OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY v. INTELLECTUAL VENTURES II LLC

Board denied institution of CBM because Petitioner failed to establish that patent was not a technological invention.
PTAB Digest

Automated Packaging Services, Inc. v. Free-Flow Packaging International, Inc.

Court stayed case pending completion of IPR even though IPR had not yet been instituted.
PTAB Digest Informative

AMX, LLC and DELL INC. v. CHRIMAR SYSTEMS, INC.

Board granted leave to file motion for additional discovery into existence of additional real parties in interest.
PTAB Digest

Actifio, Inc. v. Delphix Corp.

Board granted some of Patent Owner's objections to evidence and denied others. Board denied as moot objections to evidence that was not a basis for Board's decision.
PTAB Digest

Qualtrics, LLC v. OpinionLab, Inc.

Board denied institution of CBM because Petitioner did not show the patent claims were directed to a financial product or service.
PTAB Digest

Complex Innovations, LLC v. Amgen Inc.

Board denied institution of IPR because Petitioner did not show a motivation to combine the teachings of the prior art references.
PTAB Digest Informative

PAR PHARMACEUTICAL, INC. v. JAZZ PHARMACEUTICALS IRELAND LTD. and JAZZ PHARMACEUTICALS, INC.,

Board denied institution on obviousness ground where Petitioner failed to address an explicit teaching away in the prior art.
PTAB Digest

Bio-Rad Labs., Inc. v. GE Healthcare Bio-Sciences AB

Board stayed co-pending reissue proceeding because same claims were at issue in IPR and reissue.
PTAB Digest Informative

SNF HOLDING COMPANY, FLOPAM INC., CHEMTALL INCORPORATED, SNF SAS, and SNF (CHINA) FLOCCULANT CO. LTD. v. BASF CORPORATION

Board permitted submission of deposition errata making substantive changes to deposition testimony.
PTAB Digest Informative

ALARM.COM INC. v. VIVINT, INC.

Board found that Petitioner made a threshold showing that reference was printed publication and qualified as prior art under § 102.
PTAB Digest

Broad Ocean Techs., LLC v. Nidec Motor Corp.

Board denied Petitioner's request for rehearing on denial of institution because Petitioner's motion for rehearing raised new arguments.  
PTAB Digest Informative

GOPRO, INC. v. CONTOUR IP HOLDING LLC

In denying institution, Board gave little weight to Petitioner's expert's opinion because it was not supported by underlying evidence.
PTAB Digest Informative

THORLEY INDUSTRIES LLC, D/B/A 4MOMS v. KOLCRAFT ENTERPRISES, INC.

Board denied motion to appear pro hac vice where movant did not explain the circumstances of denial of prior pro hac vice application in reexamination proceedings.
PTAB Digest Informative

DIRECTV, LLC v. QURIO HOLDINGS, INC.

Board did not consider expert testimony in cited declaration because Petitioner violated rule against incorporating arguments by reference under C.F.R. § 42.6(a)(3).
PTAB Digest Informative

SAMSUNG ELECTRONICS CO., LTD. v. SUMMIT 6 LLC

Board granted Petitioner's motion for joinder with related proceeding where Petitioner timely filed motion for joinder, joinder would not impact the substantive issues presented in related proceeding, and Petitioner would play an "understudy" role.
PTAB Digest Informative

DIRECTV, LLC v. QURIO HOLDINGS, INC.

Board denied institution on obviousness ground where Petition failed to identify sufficiently the differences between the challenged claim and the asserted prior art references as required by Graham.
PTAB Digest Informative

APPLE, INC., et al. v. Ameranth, Inc.

Board denied Patent Owner's request for non-party discovery based on Patent Owner's failure to request authorization to apply for a subpoena from a district court under 37 C.F.R. § 42.52(a) and 35 U.S.C. § 24. 
PTAB Digest Informative

APPLE, INC., et al. v. Ameranth, Inc.

Board denied Patent Owner's request for authorization to file a motion to strike Petitioner's Reply but granted authorization to file sur-reply.
PTAB Digest

Duncan Parking Technologies, Inc. v. IPS Group Inc.

Board declined to speculate as to how Petitioner's obviousness combination disclosed an independent claim limitation where Petitioner failed to construe the limitation or identify corresponding portions of the references with particularity.
PTAB Digest Informative

LOWE’S HOME CENTERS, LLC v. MAUREEN REDDY

Board found design Patent Owner's secondary indicia arguments unpersuasive where arguments were unsupported by evidence and failed to show a nexus between the evidence and the claimed invention. 
PTAB Digest Informative

ALARM.COM INC. v. VIVINT, INC.

Board denied institution on redundancy grounds under 37 C.F.R. § 42.108 and 35 U.S.C. § 325(d) for claims that were subject to IPR in parallel proceedings despite Petitions being based on different anticipatory references. 
PTAB Digest Informative

SAMSUNG ELECTRONICS AMERICA, INC., and SAMSUNG ELECTRONICS CO., LTD., APPLE INC. v. SMARTFLASH LLC

Board found that challenged claims directed toward the abstract idea of regulating authorized use of information were unpatentable under 35 U.S.C. § 101.
PTAB Digest Informative

APPLE INC. v. SMARTFLASH LLC

Board found that district court's denial of summary judgment on 35 U.S.C. § 101 and inherent review of § 101 during prosecution did not estop Board from deciding patent eligibility under § 101.
PTAB Digest Informative

THE KROGER COMPANY and BROOKSHIRE GROCERY COMPANY v. NEXUSCARD, INC.

Board found that challenged claims covering a membership discount system that only recited generic computer components were not technological inventions and were therefore subject to CBM review.
PTAB Digest Informative

FRONT ROW TECHNOLOGIES, LLC v. MLB ADVANCED MEDIA, L.P.

Board exercised discretion under 35 U.S.C. § 325(d) to deny institution on grounds similar to those already presented to Patent Office during prior reexamination.
PTAB Digest

Intex Recreation Corp., Intex Development Company Ltd., Intex Industries (Xiamen) Co., Ltd., Intex Marketing Ltd., Intex Trading Ltd. v. Bestway Inflatables & Material Corp.

Board denied Petitioner authorization to file supplemental evidence but authorized filing of a reply to Patent Owner's preliminary response in order to address the varying PTAB decisions regarding whether copyright notice shows public accessibility.
PTAB Digest

LG Electronics, Inc. v. Core Wireless Licensing S.A.R.L.

Board denied institution, in part, because the Petitioner's ground based entirely on the applicant's admitted prior art did not comply with Section 311(b)'s "prior art patent or printed publication" requirement.
PTAB Digest

Biodelivery Scis. Int'l, Inc. v. MonoSol Rx, LLC

Board determined that a prior reexamination proceeding did not trigger collateral estoppel.
PTAB Digest Informative

AMAZON.COM, INC. and AMAZON WEB SERVICES, LLC v. PERSONALIZED MEDIA COMMUNICATIONS, LLC

Board rejected Patent Owner's contingent motion to amend for failure to claim patentable subject matter under 53 U.S.C. § 101.
PTAB Digest Informative

KINGSTON TECHNOLOGY COMPANY, INC. v. IMATION CORPORATION

Board rejected Petitioner's attempt to develop new anticipation argument at trial.
PTAB Digest Informative

IBG LLC, INTERACTIVE BROKERS LLC, TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC., TRADESTATION TECHNOLOGIES, INC., and IBFX, INC., v. TRADING TECHNOLOGIES INTERNATIONAL, INC.,

Board denied request to extend time for filing supplemental evidence after objection where Petitioner should have known that objection was likely.
PTAB Digest

Ex Parte AUTOMATED CREEL SYSTEMS, INC.

Circuit Judge Reyna, in concurring opinion, found the PTO's claim to "unchecked discretionary authority" to deny institution of grounds deemed redundant to be unprecedented and discussed the APA's requirement of "reasoned decisionmaking."
PTAB Digest

Coalition for Affordable Drugs V LLC; Hayman Credes Master Fund, L.P. et al. v. Biogen MA Inc.

Board instituted inter partes review on Petitioner's second petition involving the challenged patent, because the prior art in the second petition was significantly different from and considerably more persuasive than that of the first.
PTAB Digest

Cox Communications, Inc. v. AT&T Intellectual Property I, L.P.

Board authorized filing of a signed protective order, where both parties agreed to amendments to default protective order allowing for special designations of third party materials.
PTAB Digest Informative

GREAT WEST CASUALTY COMPANY, BITCO GENERAL INSURANCE CORPORATION, and BITCO NATIONAL INSURANCE COMPANY v. TRANSPACIFIC IP I LTD. and INTELLECTUAL VENTURES II LLC

Board rejected Patent Owner's request to deny institution based on redundant grounds where obviousness claim based on reference that was also asserted as anticipatory was rational, narrowly targeted, and not burdensome.
PTAB Digest Informative

MOTOROLA MOBILITY LLC v. INTELLECTUAL VENTURES I LLC

Board denied motion to exclude expert declaration for, inter alia, allegedly presenting attorney argument, noting that concerns justifying exclusion of expert testimony under Daubert are less compelling in bench proceedings than in jury trials.
PTAB Digest Informative

MOTOROLA MOBILITY LLC v. INTELLECTUAL VENTURES I LLC

Board denied motion to exclude textbook exhibit as hearsay and for lack of proper authentication finding that the book qualified as a learned treatise and was properly authenticated.
PTAB Digest

Under Armour, Inc. v. Adidas AG

Board determined depositions cited in Petitioner's Reply Brief were routine discovery under Section 42.51(b)(1)(i), but that exhibits cited in the depositions and unused by Petitioner's declarants, were not and could not be used in cross-examination.
PTAB Digest

CLEARLAMP, LLC v. LKQ CORPORATION

In granting summary judgment of invalidity, District Court found IPR decisions invalidating relevant claims as persuasive but not binding. 
PTAB Digest

CLEARLAMP, LLC v. LKQ CORPORATION

District Court holds that § 315(e)(2) does not estop defendant from relying on prior art that was not reasonably available during IPR but was cumulative of prior art that was reasonably available during IPR.
PTAB Digest Informative

B/E AEROSPACE, INC. v. MAG AEROSPACE INDUSTRIES, LLC

Board rejected Patent Owner's argument that assignor estoppel prevents Petitioner from seeking IPR, holding that the equitable doctrine is not applicable to IPR.
PTAB Digest

Shenzhen Liown Electronics Co., Ltd. v. Disney Enterprises, Inc.

Board denied Petitioner's request for rehearing where Petitioner's request asserted an erroneous claim construction of a term for which Petitioner had not proposed a construction. 
PTAB Digest

K.J. Pretech Co., Ltd. v. Innovative Display Technologies LLC

Board rejected Patent Owner's argument that Petition should be denied as time barred where Petitioner was a supplier to a third party served with a complaint more than a year before the Petition was filed.
PTAB Digest

Kite Pharma, Inc. v. Sloan Kettering Institute for Cancer Research

Board expunged Patent Owner's Notice of Supplemental Evidence and supplemental exhibit because the rules do not provide for supplemental evidence, served in response to evidentiary objections, to be filed at time of service.
PTAB Digest Informative

CISCO SYSTEMS, INC., QUANTUM CORPORATION, and ORACLE CORPORATION v. CROSSROADS SYSTEMS, INC.

Board found that Patent Owner's commercial success argument based on patent licenses did not weigh in favor of non-obviousness because Patent Owner failed to establish adequate nexus between claimed invention and the licenses.
PTAB Digest

DELL INC. v. ACCELERON, LLC

Federal Circuit found that Board's construction ran afoul of the rule that meaning should be given to all of a claim's terms and remanded to reconsider anticipation under the correct claim construction.
PTAB Digest

DELL INC. v. ACCELERON, LLC

Federal Circuit vacated finding of anticipation and remanded where Board's finding of anticipation was based on a factual assertion introduced into the proceeding for the first time at oral argument.
PTAB Digest

Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC

Board rejected Patent Owner's argument that Petitioner, which intervened in a district court litigation where products it manufactured were accused of infringement, was in privity with its customer AT&T, the named defendant in litigation.
PTAB Digest Informative

COALITION FOR AFFORDABLE DRUGS V LLC v. HOFFMAN-LaROCHE INC.

Board denied institution of IPR based, in part, on Petitioner's failure to address secondary indicia of non-obviousness presented to the Patent Office during prosecution of the challenged patent.
PTAB Digest

Coalition for Affordable Drugs (ADROCA) LLC v. Acorda Therapeutics, Inc.

Board held Petitioner established Patent Owner's S-1 filing with the SEC was a "printed publication" and was prior art under 35 U.S.C. Section 102.
PTAB Digest

Toshiba Corporation v. Optical Devices, LLC

Board granted Patent Owner's motion to amend to the extent it requested to cancel claims but denied to the extent it requested to enter substitute claims, because the written description did not support the additional, narrowing limitations.
PTAB Digest

IBG LLC, Interactive Brokers LLC, Tradestation Group, Inc., Tradestation Securities, Inc., Tradestation Technologies, Inc., and IBFX, Inc. v. Trading Technologies International, Inc.

Board holds that recycling portions of a petition and evidence from another CBM that was publicly available does not establish a prima facie case of control over a proceeding by a third-party petitioner.
PTAB Digest

Lumentum Holdings, Inc., Lumentum, Inc., Lumentum Operations LLC v. Capella Photonics, Inc.

Board denied Patent Owner's motion to terminate, finding that while Section 312(a) sets forth requirements that must be satisfied for the Board to consider a petition, lapse in compliance does not deprive the Board of jurisdiction.
PTAB Digest

Oxford Nanopore Techs., Ltd. v. Univ. of Wash. and UAB Research Foundation

Board found that information displayed in an undergraduate student's poster during a poster session did not qualify as prior art even though the information was anticipating and the poster session occurred before the petitioned patent priority date. 
PTAB Digest

Innopharma Licensing, Inc., Innopharma Licensing LLC, Innopharma Inc., Innopharma LLC, Mylan Pharmeceuticals Inc., and Mylan Inc. v. Senju Pharmaceutical Co., LTD.

Board explained what a third-party petitioner who seeks joinder may do and not do in its "understudy" role.
PTAB Digest Precedential

Corning Optical Communications RF, LLC v. PPC Broadband, Inc.

Court vacated the Board's determination of unpatentability due to an incorrect construction and remanded.
PTAB Digest Precedential

Corning Optical Communications RF, LLC v. PPC Broadband, Inc.

Court vacated the Board's determination of obviousness on some claims, affirmed others, and remanded.
PTAB Digest

Front Row Technologies, LLC v. MLB Advanced Media, L.P.

Board denied institution of post-grant review, finding that the patent-at-issue was ineligible for post-grant review because the patent's effective filing date was before March 16, 2013.
PTAB Digest

Great West Casualty Company, Bitco General Insurance Corporation, Bitco National Insurance Company v. Intellectual Ventures II LLC

Board denied Petitioner's request for authorization to file a Motion for Joinder because the five month gap between the filing of the relevant petitions would make logistical accommodations prejudicial primarily to Patent Owner.
PTAB Digest

Core Survival, Inc. v. S & S Precision, LLC

Board rejected Patent Owner's argument that Petitioner was obligated to propose constructions for every claim term that PO identified as "material," explaining that Petitioners cannot reasonably anticipate every term that a PO may deem material.
PTAB Digest

Dr. Reddy's Laboratories, LTD., and Dr. Reddy's Laboratories, Inc. v. Galderma Laboratories, Inc.

Board denied Petitioner's request to institute IPRs because Petitioner failed to prove that patent lacked written description support in priority application.
PTAB Digest Precedential

Synopsys, Inc. v. Mentor Graphics Corp.

Court affirmed that the Board may institute only some patent claims. 
PTAB Digest Informative

GREAT WEST CASUALTY COMPANY, BITCO GENERAL INSURANCE CORPORATION, and BITCO NATIONAL INSURANCE COMPANY v. INTELLECTUAL VENTURES II LLC

Board found that claims subject to statutory disclaimer under 35 U.S.C. § 253 should not be considered in determining whether a patent is a covered business method patent where such claims have little relevant overlap to remaining challenged claims.
PTAB Digest Informative

C.R. Bard, Inc. v. Medical Components, Inc.

Board denied institution where Petitioner's evidentiary support, including conclusory expert testimony, was insufficient to show likelihood of success for obviousness grounds of unpatentability.
PTAB Digest

First Data Corp. v. Coqui Techs., LLC

Board denied institution of IPR because Petitioner did not show obviousness to combine its chosen references. 
PTAB Digest

Crestron Electronics, Inc. v. Intuitive Building Controls, Inc.

Board granted Petitioner's motion to file supplemental information and explained the differences between supplemental information and supplemental evidence.
PTAB Digest

Oracle Corp. and NetApp, Inc. v. Crossroads Sys., Inc.

Board ruled that Patent Owner failed to swear behind a reference because it was not reasonably diligent in reducing to practice its invention.
PTAB Digest Informative

CISCO SYSTEMS, INC., QUANTUM CORPORATION, ORACLE CORPORATION, and DOT HILL SYSTEMS CORPORATION v. CROSSROADS SYSTEMS, INC.

Board found Patent Owner's commercial success argument unpersuasive where Patent Owner failed to provide analysis of market share for allegedly embodying, successful products.
PTAB Digest

Whole Space Industries LTD. v. Zipshade Industrial (B.V.I.) Corp.

Board denied institution of inter partes review after determining that the same, or substantially the same prior art arguments had been previously presented to the Board.
PTAB Digest

Tradestation Group, Inc. v. Trading Technologies International, Inc.

Board found that Petitioner's co-defendant in related district court litigation was not an RPI where there was no evidence the co-defendant had control over the petition even though the Petitioner and co-defendant coordinated on filing petitions.
PTAB Digest

Ocean Tomo, LLC v. Patent Ratings, LLC

Board denied institution for lack of standing where Petitioner was sued for breach of contract for violating a patent licensing agreement covering the subject patent, but not for infringing the subject patent.
PTAB Digest

Lupin Ltd., Lupin Pharmaceuticals Inc. v. Senju Pharmaceutical Co., Ltd.

Board granted third-party petitioner's motion for joinder with a concurrent IPR after third-party petitioner agreed to play understudy role and drop its separate expert in favor of Petitioner's expert. 
PTAB Digest Precedential

MotivePower, Inc. v. Cutsforth, Inc.

Federal Circuit vacated and remanded Board's Final Written Decision for failing to provide sufficient explanation of the reasons underlying its decisions.
PTAB Digest

Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals LLC,

On motion for sanctions for violation of protective order for use of confidential information from district court case in PTAB proceedings, Court directed parties to revise protective order to allow for limited use of covered information.
PTAB Digest

HTC Corp. and HTC America., Inc. v. Advanced Audio Devices, LLC

Board found Petitioner had proved all instituted claims unpatentable and rejected Patent Owner's argument that its licenses were evidence of the patent's clear commercial success.
PTAB Digest Informative

HTC CORPORATION and HTC AMERICA, INC. v. ADVANCED AUDIO DEVICES, LLC

Board concluded that Patent Owner failed to establish commercial success based on patent licenses because Patent Owner did not affirmatively establish a nexus between the merits of the invention and the licenses.
PTAB Digest

Amazon.com, Inc., Blizzard Entertainment, Inc. v. AC Technologies S.A.

Board denied Petitioner authorization to file additional exhibits to establish public availability of a reference, where Petitioner gave no reason that the exhibits could not have been filed with the Petition. 
PTAB Digest

NRT Technology Corp., NRT Technologies, Inc. v. Everi Payments, Inc.

Board denied institution of CBM in part because asserted reference did not qualify as prior art under 102(a).  While the reference did qualify as prior art under 102(e), 102(e) is not a statutory basis for a CBM.
PTAB Digest Informative

COALITION FOR AFFORDABLE DRUGS V LLC v. BIOGEN INTERNATIONAL GmbH

Board denied Petitioner's request for rehearing on decision denying institution where the Board found found that expert's testimony in support of institution lacked detailed explanations supporting obviousness opinions.
PTAB Digest

Hewlett-Packard Co. v. U.S. Philips Corp., Orange, S.A., TDF SAS, and Institut Fur Rundfunktechnik GmBH

Board denied institution of IPR because Petitioner had not proved prior art status of the references.
PTAB Digest

Hulu, LLC v. iMTX Strategic, LLC

Board ordered stay of co-pending reissue proceeding.
PTAB Digest

Milwaukee Electric Tool Corporation; Techtronic Industries Co. Ltd.; Techtronic Industries North America, Inc.; One World Technologies, Inc. v. Irwin Industrial Tool Company

Board granted Petitioner's request for rehearing and modified the decision to institute, because it agreed that it had overlooked that claims 21-30 were included in Ground 2 of the Petition, due to Petitioner's typographical error. 
PTAB Digest Informative

INTERNATIONAL BUSINESS MACHINES CORPORATION v. INTELLECTUAL VENTURES II LLC

Board held that Patent Owner would not be permitted to use demonstrative slides citing to evidence not included in Patent Owner's response and allowed Patent Owner to revise any slides in violation of the ruling.
PTAB Digest

MasterImage 3D, Inc., MasterImage 3D Asia, LLC v. Reald Inc.

Board expunged two Patent Owner "mandatory notices" that contained improper argument.
PTAB Digest

NHK Seating of America, Inc. v. Lear Corp.

Board found that Petitioner had not shown unpatentability of some claims because its prior art was not analogous and POSITA would not have looked to different fields.
PTAB Digest

ABS Global, Inc. and Genus PLC v. XY, LLC

Board's final claim construction, entered after trial, was narrower than preliminary construction based on trial record.
PTAB Digest

AVX Corp. and AVX Filters Corp. v. Greatbatch, Ltd.

Board denied Patent Owner request for rehearing and rejected Patent Owner's "teaching away" argument.
PTAB Digest

Ube Maxell Co., Ltd. v. Celgard, LLC

Board denied institution of inter partes review, finding that, while Petitioner focused more on issues found lacking in previous IPRs, the grounds presented were not sufficiently different in any material respect and were substantially the same.
PTAB Digest

Nestle USA, Inc. v. Steuben Foods, Inc.

Example of Patent Owner's submission of telephonic hearing transcript.
PTAB Digest

Johns Manville Corporation v. Knauf Insulation, Inc.

Board declined to institute Petitioner's IPR because the opinions of Petitioner's expert were conclusory and lacked credible support.  
PTAB Digest

Ex Parte Star Envirotech, Inc.

Federal Circuit affirmed Board's decision denying Petitioner's motion to submit expert declaration after institution finding, among other things, that the Board's actions were consistent with statutory interpretation and regulatory history. 
PTAB Digest

AVX Corp. v. Greatbatch Ltd.

Board found all claims unpatentable and denied Patent Owner's second motion to amend claims.
PTAB Digest

ServiceNow, Inc. v. BMC Software, Inc.

Board denied authorization for Petitioner to file supplemental information under 37 CFR 42.123(a) where Petitioner's evidence of prior art status was considered supplemental evidence under 37 CFR 42.64(b)(4) in response to Patent Owner's objections.
PTAB Digest

Square, Inc. v. Unwired Planet, LLC

Board ruled that Petitioner was estopped from instituting a CBM under 35 U.S.C. § 325(e)(1) because grounds raised in petition reasonable could have been raised in earlier petition.
PTAB Digest Informative

GOPRO, INC. v. CONTOUR IP HOLDING LLC

Board granted Petitioner's request to submit supplemental information on alleged public accessibility of prior art reference relied upon by Petitioner.
PTAB Digest

Arris Group, Inc., Cox Communications, Inc. v. C-Cation Technologies, LLC

Board expunged exhibits filed by Patent Owner in response to Petitioner's objections, because the rules do not provide for supplemental evidence to be filed at the time of service. 
PTAB Digest

Ex Parte Merck & Cie

Federal Circuit affirmed Board's finding of obviousness relying on underlying findings of fact that supported motivation to combine and finding that evidence of secondary indicia lacked an adequate nexus to the merits of the claimed invention.
PTAB Digest

Arisdyne Systems, Inc. v. Cavitation Technologies, Inc.

In light of the difficulties in having Patent Owner's witnesses testify in the U.S., the Board offered Patent Owner its choice between two cross-examination "plans" and set due dates according to those plans.
PTAB Digest Informative

Universal Remote Control, Inc. v. Universal Electronics, Inc.

Board adopts claim construction of its own after rejecting each party's construction and concluding that expert testimony was unhelpful. 
PTAB Digest Informative

Universal Remote Control, Inc. v. Universal Electronics, Inc.

Board granted Petitioner's motion to exclude testimony of expert witness elicited through leading questions under Federal Rule of Evidence 611.
PTAB Digest

Ford Motor Co. v. Paice LLC & The Abell Foundation, Inc.

Board ruled Petitioner was estopped from challenging two claims on prior art that it could have raised in an earlier IPR against those claims.
PTAB Digest

Microsoft Corporation v. Proxycon, Inc.

On remand after Federal Circuit appeal had corrected claim constructions, Board again concluded that certain claims of the patent at issue were unpatentable.
PTAB Digest

Global Tel*Link Corporation v. Securus Technologies, Inc.

Board declined to institute Petitioner's IPR as unpatentable under 35 U.S.C. 101.
PTAB Digest

Global Tel*Link Corporation v. Securus Technologies, Inc.

Board summarized requirements for PGR eligibility and instituted Petitioner's obviousness grounds that taught or suggested all limitations of the petitioned claims and articulated reasoning with rational underpinning for combining the references.
PTAB Digest Informative

Motionpoint Corporation v. Transperfect Global, Inc.

Board granted request to file additional briefing to address an issue on standing raised in Patent Owner's Preliminary Response.
PTAB Digest

Google Inc. v. Intellectual Ventures II LLC

Board denied Patent Owner's motions to exclude evidence and found unpatentable all claims of the patent at issue.
PTAB Digest

Global Tel*Link Corp. v. Securus Techs., Inc.

Board concluded that Patent Owner did not make a prima facie case showing that Petitioner failed to list all RPIs and instituted IPR.
PTAB Digest

Bungie, Inc. v. Worlds Inc.

Board rejected Patent Owner's arguments that a third-party should be named as a real party-in-interest mainly because Patent Owner failed to show that the third-party had an opportunity to control the proceeding.
PTAB Digest Precedential

ScentAir Techs., Inc. v. Prolitec, Inc.

Court affirmed the Board's determination that both claims were unpatentable under both 102 and 103 and the Board's denial of motion to amend.
PTAB Digest Informative

MASTERIMAGE 3D, INC. and MASTERIMAGE 3D ASIA, LLC v. REALD INC.

Board denied request for authorization by Patent Owner to file a motion to expunge Petitioner's Supplemental Reply to Patent Owner's Response.
PTAB Digest Informative

KOFAX, INC. v. UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.

Board rejected Patent Owner's argument that Petition should be denied because the grounds of unpatentability were redundant compared to grounds presented in prior IPR.
PTAB Digest

Actifio, Inc. v. Delphix Corp.

Board determined Patent Owner was entitled to cross-examine a declarant late in the proceeding, because the declaration had only just been filed as supplemental evidence, despite the declaration having been served much earlier.
PTAB Digest Informative

MARVELL SEMICONDUCTOR, INC. v. INTELLECTUAL VENTURES I LLC

Board denied Patent Owner's motion to exclude portions of expert declaration as inadmissible hearsay after concluding that Patent Owner had an opportunity to expose weaknesses in expert's declaration during cross examination.
PTAB Digest Informative

EASTMAN KODAK CO., AGFA CORP., ESKO SOFTWARE BVBA, and HEIDELBERG, USA v. CTP INNOVATIONS, LLC

Board denied Patent Owner's motion to exclude evidence submitted prior to Petitioner's Reply regarding date of public availability because declarations served as rebuttal to arguments made in Patent Owner's response.
PTAB Digest

Microsoft Corp. and Int'l Bus. Mach. Corp. v. Parallel Networks Licensing, LLC

Board partially granted Patent Owner's Unopposed Motion to Seal, sealing settlement agreements filed as exhibits but not portions of the Patent Owner Preliminary Response and Patent Owner Response. 
PTAB Digest

Zhejiang Yankon Group, LTD. v. Coirdelia Lighting, Inc.

Board denied institution because Petitioner failed to disclose U.S. subsidiary involved in related patent litigation as a real party-in-interest but refused to find that indemnitee who shared same counsel in district court litigation was also an RPI.
PTAB Digest

Square, Inc. v. REM Holdings 3, LLC

Board granted Petitioner's request for rehearing, modifying its final decision of unpatentability to include claims previously excluded, because the Board had misapprehended Petitioner's reliance on an additional reference for the excluded claims.
PTAB Digest

Acxiom Corp., et al. v. Phoenix Licensing, LLC

Board held that a Petitioner, who was not sued for patent infringement, lacked standing to file a CBM petition because it failed to adequately show that it was a real party-in-interest by virtue of relationship with customer that was sued.
PTAB Digest Informative

CHICAGO MERCANTILE EXCHANGE, INC. v. 5th MARKET, INC.

Board granted Petitioner's request to file a motion to subpoena a non-party under 35 U.S.C. under § 24, but limited discovery to the statements and subject matter of non-party's declaration regarding the public availability of prior art.
PTAB Digest

Apple Inc. v. Smartflash LLC

Board found Petitioner estopped from challenging claim 26 under Section 101, because it reasonably could have raised the challenge in its previous petition under Section 103, even if intervening case law (Alice) clarified jurisprudence. 
PTAB Digest

Emnos USA Corp. v. Dunnhumby Ltd.

Board denied institution of CBM because the patent fell within the technological invention exclusion for patents claiming a financial product or service.
PTAB Digest Precedential

Nexans, Inc. v. Belden Technologies Inc.

Federal Circuit overturned the Board's finding claims were not shown obvious for lack of motivation to combine references where references provided a reason to combine, even though not related to the embodiments in the obviousness combination
PTAB Digest Precedential

Nexans, Inc. v. Belden Technologies Inc.

Federal Circuit found Patent Owner was not denied its due process rights by Petitioner's allegedly improper reply because Patent Owner did not seek an opportunity to file a sur-reply.
PTAB Digest

Apple Inc. v. Virnetx Inc.

Board allowed Petitioner to submit supplemental information, which provided additional evidence that the prior art for each instituted grounds was indeed prior art.
PTAB Digest

Texas Association of Realtors v. Property Disclosure Technologies, LLC

Board denied without prejudice CBM institution for lack of standing under § 18(a)(1)(B) of the AIA where petitioner failed to establish there had been any direct contact with petitioner or eminent danger of suit to establish standing. 
PTAB Digest

ETS-Lindgren Inc. v. Microwave Vision, S.A.

Board denied institution of inter partes review after construing the function of a means-plus-function claim to require a single means for pivoting and concluding that Petitioner had identified separate structures for pivoting. 
PTAB Digest

Eli Lilly & Co. v. Los Angeles Biomedical Research Institute at Harbor-UCLA Med. Ctr.

Board ruled no anticipation where reference did not inherently disclose dosing requirement.
PTAB Digest

RPX Corporation v. Applications In Internet Time, LLC

Board granted Patent Owner's request for additional discovery regarding Petitioner RPX's relationship with third-party Salesforce where RPX's third party customer had been sued for infringement and was time-barred from filing petitions.
PTAB Digest

Apple Inc. v. Achates Reference Publishing, Inc.

Federal Circuit held the Board's institution decision, including its determination that IPR petition was timely, is not reviewable on appeal, even where the assessment is reconsidered during the merits phase of the proceedings.
PTAB Digest Informative

Deere & Co. v. Richard Gramm

Board instituted IPR over Patent Owner's argument that the petition was too poorly organized to understand.
PTAB Digest Informative

Deere & Co. v. Richard Gramm

Board refused to consider new arguments raised in 135 pages of claim charts attached to expert declaration because the claim charts exceeded the 60 page limit. 
PTAB Digest

Dot Hill Systems Corp. v. Crossroads Systems, Inc.

Board held contractual estoppel cannot be asserted as an affirmative defense by Patent Owner to prevent institution of an inter partes review.
PTAB Digest

LG Electronics, Inc. v. Mondis Technology Ltd.

Board determined the one year bar was triggered by a previously dismissed complaint, because the parties were no longer in the same legal position after having some claims dismissed with prejudice and being subject to a settlement agreement.
PTAB Digest

Apotex Inc. v. Wyeth LLC

Board determined Petitioner was not estopped from asserting ground of unpatentability for argument raised but found redundant in a previous petition.
PTAB Digest

Apotex Inc. v. Wyeth LLC

Board denied institution in part because Petitioner raised grounds it could have raised in a previous IPR and was estopped.
PTAB Digest

ServiceNow, Inc. v. BMC Software, Inc.

Patent specification taught use of invention in financial business method context but patent claims did not claim a financial business method embodiment, so Board denied institution because claims did not cover a financial product or service.
PTAB Digest Precedential

Dynamic Drinkware LLC v. National Graphics, Inc.

Federal Circuit affirmed Board's finding that Petitioner had, and failed to meet, the burden to prove prior art patent was entitled to the filing date of its provisional application.
PTAB Digest Informative

Westlake Services, LLC v. Credit Acceptance Corp.

Board denied Patent Owner's request for permission to file motion to terminate (against Petitioner's wishes) after district court litigation was settled because standing existed at the time of filing.
PTAB Digest

Mastercard International Incorporated v. John D'Agostino

In a final decision, Board denied Petitioner's motion to exclude testimony by Patent Owner's expert, finding the expert was not constrained by the Board's preliminary constructions and was permitted to provide evidence towards claim construction.
PTAB Digest

Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.

Federal Circuit affirmed Board's findings of obviousness in seven related CBM proceedings and held that PTAB is not subject to estoppel such that PTAB can enter final written decisions in cases even if a prior decision reached different result. 
PTAB Digest

Fujitsu Semiconductor Ltd. v. Zond, LLC

Board found that Petitioner proved thesis was a publicly available publication because the 1994 "imprint" date was eight years before the 2002 patent priority date. In a dissenting opinion, one panelist challenged the sufficiency of the evidence.
PTAB Digest Informative

Acxiom Corporation v. Phoenix Licensing, LLC

Board found that co-petitioner did not have standing to bring CBM where co-petitioner did not allege that it was sued or had a real party in interest or privy sued.
PTAB Digest Informative

Chums, Inc., and Croakies, Inc. v. Cablz, Inc.

Board dismissed and expunged improper motions for observation on cross-examination and to exclude evidence because testimony was available prior to Patent Owner filing its last substantive paper (i.e., its PO Response).
PTAB Digest Informative

Netsirv and Local Motion MN v. Boxbee, Inc.

Board found that uncorroborated testimony from interested party was not sufficient to establish prior public use, sale, or knowledge to show unpatentability under 35 U.S.C. § 102(a)(1).
PTAB Digest Informative

Netsirv and Local Motion MN v. Boxbee, Inc.

Board found that more likely than not that patent covering method for facilitating containerized storage was unpatentable under 35 U.S.C. § 101. 
PTAB Digest

Praxair Distribution, Inc. v. INO Therapeutics, Inc.

Board denied institution of inter partes review, in part, because circumstances of the prior art contraindicated Petitioner's argument that a limitation would have been obvious to a POSA. 
PTAB Digest Informative

MOTOROLA MOBILITY LLC v. INTELLECTUAL VENTURES I LLC

Board denied request for rehearing of decision to institute rejecting Patent Owner's claim that Board abused discretion by not denying Petitioner's second petition where first petition was denied due to jurisdictional issues.
PTAB Digest

Biomarin Pharmaceutical, Inc. v. Duke University

Board modified its analysis regarding claim 19, determining the references did not disclose a claimed element, but maintaining its determination that Petitioner proved by a preponderance of the evidence that claim 19 would have been obvious.
PTAB Digest

Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc.

Board rejected Patent Owner's request for rehearing of its decision not to institute that was based on finding that preamble was entitled to patentable weight.
PTAB Digest

Apple Inc. v. ContentGuard Holdings, Inc.

Board denied institution because procedural defects related to claim mapping and nested citations impermissibly required the Board "to play archeologist [sic] with the record" and, as a result, Petition failed to comply with statutory requirements. 
PTAB Digest

Amazon.com, Inc. and Amazon Web Services, Inc. v. Appistry, Inc.

When a Patent Owner provides sufficient rebuttal evidence that reasonably brings into question a real party-in-interest issue, the burden is on the Petitioner to establish that all parties have been properly identified as a real party-in-interest.
PTAB Digest

LG Electronics, Inc. v. Advanced Micro Devices, Inc.

Board found the presence of a copyright notice on the face of a reference, together with a listing of the reference in an IDS, provided sufficient evidence to demonstrate a reasonable likelihood the reference was a printed publication and prior art. 
PTAB Digest Informative

FINJAN, INC. v. FIREEYE, INC.

Board found that it would have been obvious to combine prior art references notwithstanding evidence of trade-offs regarding features and costs of the combination. 
PTAB Digest Precedential

Versata Development Group, Inc. v. SAP America, Inc., SAP AG

Federal Circuit found the Board's determination at institution that a patent qualified as a covered business method patent under AIA section 18 was reviewable after the final written decision.
PTAB Digest

Caterpillar, Inc. v. Miller Int'l, Ltd.

Board instituted IPR on a design patent after explaining the obviousness analysis it undertakes for design patents.
PTAB Digest

LG Electronics, Inc. v. Advanced Micro Devices, Inc.

Board denied institution of inter partes review where Petitioner failed to show a reasonable likelihood it would prevail, which was due, in part, to Petitioner's attempt to incorporate an argument by reference from the expert declaration. 
PTAB Digest Informative

PURDUE PHARMA L.P. v. DEPOMED, INC.

Board found that Petitioner had not shown obviousness of the challenged claims where, although the asserted combination of prior art disclosed all the limitations of the challenged claims, Petitioner did not show motivation to combine.
PTAB Digest Informative

FCA US LLC v. JACOBS VEHICLE SYSTEMS, INC.

Board granted Petitioner's motion to terminate where a second Petition addressed the same grounds of invalidity and proceeding with both cases would be redundant. 
PTAB Digest

Square, Inc. v. Think Computer Corp.

Board granted Petitioner's request to file a motion for sanctions based on Patent Owner's ex parte communication and alleged harassment of Petitioner's expert.
PTAB Digest

LG Display Co., Ltd. v. Delaware Display Group LLC

Board denied Patent Owner's RPI arguments because Patent Owner failed to show funding or control by unnamed sister companies that shared counsel with petitioner in district court proceeding. 
PTAB Digest

FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P.

Board found that a corporate leadership entity is not a real party-in-interest unless demonstrated that it had or could have control over filing the petition.
PTAB Digest

FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P.

The Board denies CBM patent review of claims directed to a telephone interface analysis control system because the claimed technology is "common in business environments across sectors" with "no particular relation to the financial services sector"
PTAB Digest

FedEx Corp. v. Ronald A. Katz Tech. Licensing, L.P.

Because a third-party is a co-defendant in a litigation is not, by itself, sufficient to show that it is a real party-in-interest.
PTAB Digest

American Simmental Association v. Leachman Cattle of Colorado, LLC

Board in PGR proceeding grants stay in co-pending reissue proceeding to avoid duplicate efforts within the Patent Office and potential inconsistencies between the proceedings.
PTAB Digest

STONEEAGLE SERVICES, INC. v. PAY-PLUS SOLUTIONS, INC., and PREMIER HEALTHCARE EXCHANGE, INC.

District Court denied defendant's motion in limine seeking preclusion of PTAB's decisions denying IPR and CBM of the asserted patent.
PTAB Digest

Pragmatus Mobile, LLC v. Amazon.com, Inc.

Court denied motion to stay pending IPR institution decision because the litigation was in the late stages of document production and briefing, and the trial date had been set.
PTAB Digest Precedential

Microsoft Corp. v. Proxyconn, Inc.

The Court reversed one Board construction, but affirmed another, and remanded the case to the Board.
PTAB Digest Precedential

Microsoft Corp. v. Proxyconn, Inc.

The Federal Circuit affirmed the Board's denial of Patent Owner's motion to amend.
PTAB Digest

Samsung Electronics Co. Ltd., et al. v. Rembrandt Wireless Technologies, LP

Board denied Patent Owner's request to file a motion to strike portions of Petitioner's Reply alleged to be beyond the proper scope of the reply; instead, Board allowed both parties to file a paper under strict regulations.
PTAB Digest Precedential

Ex Parte Belden, Inc.

The Federal Circuit affirmed the Board's cancellation of the challenged claims based on anticipation and obviousness grounds relying on the Board's findings of fact underlying its claim constructions. 
PTAB Digest Informative

Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.

On request for rehearing, Board granted Patent Owner's motion to amend and held that patent owner was not required to account for prior art beyond what was cited in the Petition when claim was found patentable over the prior art in the Petition.
PTAB Digest

Fujian Newland Computer, Inc. v. Hand Held Products, Inc.

Board denied motions by Petitioner and Patent Owner to exclude evidence because their motions went to the weight to be afforded to the evidence rather than to the admissibility of the evidence.
PTAB Digest Precedential

In re Cuozzo Speed Technologies, LLC

Federal Circuit held that 35 U.S.C. § 314(d) precludes review of a determination to institute IPR even after a final written decision is issued.
PTAB Digest Precedential

In re Cuozzo Speed Technologies, LLC

Federal Circuit held that PTO acted within its rulemaking authority in determining that claims subject to IPR should be given their “broadest reasonable interpretation."
PTAB Digest

LUNAREYE, INC. v. GORDON HOWARD ASSOCIATES, INC.

District Court granted motion for sanctions for violation of district court protective order where counsel disclosed confidential information learned in litigation during unrecorded PTAB call regarding a request for additional discovery.
PTAB Digest

VERINATA HEALTH, INC. v. ARIOSA DIAGNOSTICS, INC

District Court granted defendant's motion to stay pending IPR and subsequent Federal Circuit appeals despite the case being just six months from trial because factors considering simplification of the case and prejudice weighed in favor of stay. 
PTAB Digest

Star Envirotech, Inc. v. Redline Detection, LLC and Kenneth A. Pieroni

District court held that defendants were not estopped from using references from an IPR in the litigation because the references were combined with prior art that was inadmissible in the IPR and therefore could not have been presented in the IPR.
PTAB Digest

Roche Molecular Systems, Inc. v. Cepheid

Northern District of California court granted a motion to stay the entire case prior to an IPR institution decision and despite (1) less than all litigated claims being petitioned and (2) still-pending assignor estoppel arguments. 
PTAB Digest

Square, I nc. v. Unwired Planet, LLC

Board instituted CBM review on § 101 grounds.
PTAB Digest

PROTEGRITY CORP. v. EPICOR SOFTWARE CORP.

District Court  granted defendant's motion to stay prior to CBM institution reasoning that whether the PTAB instituted review is just one factor to consider in deciding a motion to stay pending PTAB proceedings.
PTAB Digest

Canvs Corp. v. Nivisys, LLC

The court granted Defendant's Renewed Motion to Stay the case pending final decision in IPR proceeding after Board instituted review in IPR proceeding.
PTAB Digest

Mophie, Inc. v. Unu Electronics Inc., et al.

The Court granted a motion to stay the only patent claim in the case pending ex parte reexamination proceedings at the Patent Office, even though the trial date had been set in the litigation and the parties were direct competitors.
PTAB Digest Informative

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. et al.

Northern District of California granted motion for new trial on damages after the plaintiff's expert admittedly failed to apportion the royalties solely on the patented features. 
PTAB Digest

Toyota Motor Corp. v. Leroy G. Hagenbuch

Board authorized Patent Owner to file a one-page non-argumentative submission identifying issues in the Reply that improperly exceeded the scope of the Reply and explained that a motion to exclude should not be filed.
PTAB Digest Informative

Medtronic, Inc. v. Nuvasive, Inc.

Board denied institution because Petitioner failed to provide any sufficient reasoning as to why its Petition did not present "the same or substantially the same prior art or arguments" already presented in another petition.
PTAB Digest

TD Ameritrade Holding Corp. v. Trading Technologies International, Inc.

Board denied Patent Owner's request for a live demonstration of the invention in support of its Preliminary Response because it is akin to new testimony evidence and is "tantamount to additional briefing in 'live' format".
PTAB Digest Informative

Apple Inc. v. SightSound Technologies, LLC

Board granted Patent Owner's request to file sur-reply responding to obviousness grounds allegedly raised for the first time in Petitioner's reply.
PTAB Digest

Amazon.com, Inc. and Amazon Web Services, LLC v. Personalized Media Communications, LLC

Board rejected Patent Owner's claim to an earlier priority date for failure to rebut Petitioner's showing that the patent-at-issue, a CIP, was not entitled to the filing date of an earlier application. 

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