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

PTAB Digest

JOHNSON CONTROLS, INC. v. WILDCAT LICENSING WI, LLC

Board denied request for rehearing of final written decision finding claims unpatentable and rejected patent owner argument that the Board was required to interpret claims in light of alleged prosecution history disavowals of claim scope.
PTAB Digest

Smart Modular Technologies, Inc. v. Netlist, Inc.

Board authorized Patent Owner's motion to exclude portions of Petitioner's Reply that allegedly cite new portions of the challenged patents to support new theories of invalidity.
PTAB Digest

ServiceNow, Inc. v. Hewlett-Packard Company

Board held that simply mapping claims to financial embodiments disclosed as exemplary in the specification (as opposed to the claims) was not enough to qualify for CBM review.
PTAB Digest

Zhongshan Broad Ocean Motor Co., Ltd., Broad Ocean Motor LLC, and Broad Ocean Technologies, LLC v. Nidec Motor Corporation

Board granted Petitioner's request to join a later IPR to its own earlier IPR based on a broad reading of the joinder statute and the fact that the later IPR petition was denied only because Petitioner had not provided a required affidavit.
PTAB Digest

AVOCENT HUNTSVILLE CORPORATION and LIEBERT CORPORATION v. CYBER SWITCHING PATENTS, LLC

Motion to submit supplemental information denied because petitioner already served the information and may simply file it under 42.64(b)(2); motion to get third party discovery denied because petitioner should have obtained it earlier
PTAB Digest

Actifio, Inc. v. Delphix Corp.

Board granted Petitioner's motion to compel Patent Owner's production of confidential documents that could show inconsistencies in Patent Owner's claim construction.
PTAB Digest

GEA Processing Engineering, Inc. v. Steuben Foods, Inc.

Draft "omnibus" expert declaration must be disclosed over work product privilege objection because expert only authorized filing of omnibus version, not the five-way split versions that were actually submitted in five related IPRs.
PTAB Digest

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

Panel including Deputy Chief APJ Kelley and Vice Chief APJ Boalick issued clarifiying statements regarding the informative Idle Free Systems decision regarding the burdens on a Motion to Amend Claims.
PTAB Digest

COALITION FOR AFFORDABLE DRUGS V LLC v. BIOGEN INTERNATIONAL GmbH

Request for discovery from real parties in interest granted - discovery narrowly tailored and intended to prove that petitions are an abuse of process because petitions are short sale funds.
PTAB Digest

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

Request to use existing deposition testimony from petitioner's expert in patent owner preliminary response denied by Board because PO did not show the testimony would contradict or impeach the testimony offered by the expert in this case.

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