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

PTAB Digest

Galderma S.A. and Q-Med AB v. Allergan Industrie, SAS

Board denied IPR petition because Petitioner had not named its parent companies as real parties in interest.
PTAB Digest

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.

Board denied request for rehearing after explaining that Petitioners bear the burden of proof on identifying all real parties in interest and concluding that petitioner failed to name all real parties in interest in its petition.
PTAB Digest

VMware, Inc. v. Good Technology Software, Inc.

Board held that the existence of a privy is judged at the time of filing a petition and denied petition as time barred because Petitioner's wholly owned subsidiary had been served with a complaint more than one year before the filing date.
PTAB Digest

3M Company, INC. v. Andover Healthcare, Inc.

Board granted-in-part the request for rehearing for a single claim, and then instituted review for that claim because it erred in applying a construed term to the prior art. 
PTAB Digest

3M Company, INC. v. Andover Healthcare, Inc.

Board denied-in-part this request for rehearing with respect to select claims because Petitioner failed to show how Board overlooked inherency arguments.
PTAB Digest

Power Survey, LLC v. Premier Utility Services, LLC, et al.

District court refused to reconsider a preliminary injunction even after PTAB instituted review of the allegedly infringed patents.
PTAB Digest

Target Corporation v. Destination Maternity Corporation

An expanded panel held that petitioners--not just third parties--that would otherwise be time-barred can file a new petition (e.g., to correct issues identified in a decision to institute) and join it to a preexisting IPR under 35 U.S.C. § 315(c).
PTAB Digest

Target Corporation v. Destination Maternity Corporation

An expanded panel of seven judges granted Petitioner's request for rehearing and distinguished requests for joinder from requests for consolidation.  
PTAB Digest

AmerisourceBergen Specialty Group, Inc. v. FFF Enterprises, Inc.

District judge denied Defendant's pre-institution motion to stay litigation pending CBM review as premature. (U.S. District Court for the Eastern District of Texas Sherman Division).
PTAB Digest

Par Pharmaceutical, Inc., Roxane Laboratories, Inc. and Amneal Pharmaceuticals, LLC v. Jazz Pharmaceuticals, Inc.

The Board required that the claims, and not just the specification, must have a financial component for the patent to qualify for CBM review. 
PTAB Digest

Wavemarket, Inc. d/b/a Location Labs v. Locationet Systems Ltd.

Board denied Petitioner's motion for joinder of two IPR petitions challenging claims from the same patent because the Board's institution decisions involved different claims of the patent and relied on different grounds for institution.  
PTAB Digest

Google, Inc. v. Rockstar Consortium US LP and MobileStar Technologies, LLC

Board denied Patent Owner's unopposed request to file a motion for an extension of time to file a preliminary response while parties attempted to reach settlement.
PTAB Digest

Cyanotech Corporation v. Board of Trustees of the University of Illinois

PTAB's final decision found some claims to method for treating a disease comprising administering a "therapeutically effective" amount of drug anticipated by inherency.  
PTAB Digest

Cyanotech Corporation v. Board of Trustees of the University of Illinois

The Board holds that, as a matter of law, evidence of secondary considerations of non-obviousness is irrelevant if a claim is anticipated by the prior art, regardless whether proposed grounds of invalidity are obviousness or anticipation.
PTAB Digest

SAP America, Inc. v. Pi-Net International, Inc.

Board sanctioned Patent Owner for unsubstantiated allegations concerning the asserted bias of one of the panel's judges.  
PTAB Digest

VMware, Inc. v. Good Technology Software, Inc.

Board denied-in-part and granted-in-part Patent Owner's motion for additional discovery regarding whether the corporate relationship of a company acquired by petitioner triggered the one-year bar for filing the IPR petition.   
PTAB Digest

JST Performance, Inc. d/b/a Rigid Industries v. Koninklijke Philips N.V.

Board denied institution request on grounds of anticipation because Petitioner failed to provide factual support of asserted inherent disclosure of the cited prior art reference.
PTAB Digest

JST Performance, Inc. d/b/a Rigid Industries v. Koninklijke Philips N.V.

Board denied institution of IPR on grounds of obviousness because petitioner failed to provide evidence in support of a motivation to combine and reasonable expectation of success.  
PTAB Digest

Captioncall, LLC v. Ultratec, Inc.

Patent Owner objected to certain of Petitioner's demonstrative slides for trial and the Board ordered such slides be excluded from Petitioner's trial presentation.   
PTAB Digest

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc.

Board denied Patent Owner's request to cite and rely upon a new deposition transcript in preliminary response because the deposition occurred one month after the Petition was filed.
PTAB Digest

L-3 Communications Holdings, Inc. v. Power Survey, LLC

Board denied institution of IPR because Petitioner failed to prove the prior art status of a key reference that was discussed and disclosed during the original prosecution of the disputed patent. 
PTAB Digest

Valeo, Inc. v. Magna Electronics, Inc.

Board denied Patent Owner's request to depose declarant regarding prior art status because Patent Owner did not timely pursue the deposition after Petitioner served the declaration in response to objection that prior art did not qualify as prior art.
PTAB Digest

General Electric Company v. TransData, Inc.

Board granted-in-part Patent Owner's motion for additional discovery regarding privity between Petitioner and defendant in lawsuit brought by Patent Owner for purpose of evaluating whether IPR was time-barred.
PTAB Digest

QSC Audio Products, Inc. v. Crest Audio, Inc.

Board expunged Patent Owner's "Notice of Objections" to an exhibit because the Board's rules do not allow the filing of such notices.
PTAB Digest

LinkedIn Corp. v. AvMarkets Inc.

Board found claims direct to creating a product catalog to generate sales leads using a general purpose computer over the Internet was not patent eligible subject matter.  
PTAB Digest

Nautique Boat Company, Inc. v. Malibu Boats, LLC

The Board stated that argument should not be presented during a conference call to request a motion.
PTAB Digest

CustomPlay, LLC v. ClearPlay, Inc.

Board denied petition because it was based on the same prior art submitted by the same petitioner in an earlier petition for IPR of the same claims in the same patent.
PTAB Digest

Canon Inc. v. Intellectual Ventures I LLC

Board denied Petitioner's request for rehearing of the Board's discretionary determination not to institute two out of three IPR proceedings that attacked the same patent and claims three different ways. 
PTAB Digest

Noven Pharmaceuticals, Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme AG

Board held that Petitioner's certification filing in the FDA did not qualify as a civil action that would preclude Petitioner from filing a petition for IPR.
PTAB Digest

Butamax Advanced Biofuels LLC v. Gevo, Inc.

Board agreed to allow Patent Owner's counsel to attend oral hearing without presenting arguments and to rest on briefs to avoid the expense of preparing for oral hearing but denied motion for leave to excuse Patent Owner's counsel from trial.
PTAB Digest

Aker Biomarine AS v. Neptune Technologies and Bioressources Inc.

Board denied Petitioner's request for documents that Patent Owner had produced in a prior ITC hearing because the information was available by other means or already subject to self-executing discovery obligations.
PTAB Digest

Samsung Electronics Co., Ltd. v. Black Hills Media, LLC

Board approved additional discovery to determine whether potential indemnitor was a real party in interest.
PTAB Digest

Medtronic, Inc. v. Endotach LLC

Board denied Petitioner's motion for joinder in a case involving a "second bite" petition for self-joinder.
PTAB Digest

Neste Oil Oyj v. REG Synthetic Fuels, LLC

Board allowed Patent Owner to include in its reply brief in support of its motion to amend rebuttal arguments to Petitioner's Reply. 
PTAB Digest

Masimo Corporation v. Philips Electronic North American Corporation and Philips Medizin Systeme Boblingen GMBH

Court allowed defendant to allege inequitable conduct after plaintiff failed to apprise examiner in ex parte reexamination that reexamination certificate would be based on a claim construction that had been rejected by the district court.
PTAB Digest

Intri-Plex Technologies, Inc. and MMI Holdings, Ltd. v. Saint-Gobain Performance Plastics Rencol Limited

Board denied Patent Owner's request for a non-standard protective order and motion to seal because Patent Owner had not shown that it would be harmed by entry of the default protective order.
PTAB Digest

Automated Merchandizing Systems, Inc. v. Teresa Stanek Rea

Court refused to stop inter partes reexaminations after entry of a consent decree in related litigation because the consent decree did not go to the merits of validity.
PTAB Digest

Motorola Mobility, LLC v. Intellectual Ventures I, LLC

Board found Petitioner's overly-simplified characterization of the claimed invention "inaccurate and incomplete" and denied institution for failure to show that claimed invention was not a technological invention. 
PTAB Digest

Redline Detection, LLC v. Star Envirotech, Inc.

Board rejected argument that definition of person of ordinary skill in the art must focus on level of ordinary skill in the United States, not other countries.
PTAB Digest

Idle Free Systems, Inc. v. Bergstrom, Inc.

Board declined to discredit expert witness deposition testimony despite expert witness's consultation with attorney during the deposition.

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