In IPR proceeding First Data Corporation v. Cardsoft (Assignment for the Benefit of Creditors), LLC, the petitioner, First Data Corporation, attempted to file a petition on April 30, 2014 seeking review of U.S. Patent No. 6,934,945 assigned to Cardsoft (Assignment for the Benefit of Creditors), LLC. On May 20, 2014,…
Articles Posted in Inter Partes Review
The PTAB Authorizes the Patent Owner to File Its Motion for Leave to Take Discovery of General Electric on Possible Privity with a Customer-Defendant
In General Electric Co. v. Transdata, Inc., the patent owner requested authorization to file a motion for leave to take discovery of petitioner General Electric regarding whether GE is in privity with a defendant in litigation with the patent owner. Should the patent owner prevail and prove that GE is…
District Court Precludes Admission of Inter Partes Review Proceedings in Front of Jury But Permits Consideration as part of Willfulness Determination
In this patent infringement action between Ultratec, Inc. (“Ultratec”) and Sorenson Communications, Inc. (“Sorenson”), Sorenson sought to admit evidence of an inter partes review proceeding of the patent-in-suit. Sorenson wanted to admit the evidence to contradict the plaintiff’s use of the presumption of validity of the patent. As explained by…
PTAB Requires the Patent Owner to Attend Oral Argument
In Butamax Advanced Biofuels, LLC v. Gevo, Inc., the patent owner requested permission to be excused from the oral hearing. The patent owner cited the expense of having counsel prepare for and attend the hearing. Instead, the patent owner preferred to rest on its written response to the petition. The…
The PTAB Warns Attorney That Speaking Objections May Warrant Exclusion of Expert’s Testimony
In an inter partes review Medtronic Inc. et al. v. Troy R. Norred, M.D., the Petitioner sought guidance from the Board regarding the Patent Owner’s objections during the deposition of an expert appearing on behalf of the Patent Owner. According to the Petitioner, the Patent Owner made speaking objections and…
E.D. Texas court grants stay of litigation pending an IPR based, in part, on patent owner’s failure to timely respond to the stay motion
In Norman IP Holdings v. TP-Link Technologies, Co., et al., the Defendants moved to stay the litigation pending completion of an inter partes review involving the patents-in-suit. The plaintiff did not respond to the motion. Thereafter, the court granted the motion and stayed the litigation pending completion of the IPR…
The PTAB finds that the petitioner did not show that a patent claiming internet-based transactions is not a technological invention and denied CBM review on that basis
In GSI Commerce Solutions, Inc. v. Lakshmi Arunachalam, GSI filed a petition seeking covered business method patent review of U.S. Patent No. 8,346,894 relating to “facilat[ing] real-time two-way transactions, as opposed to deferred transactions, e.g., e-mail.” CBM2014-00101. The Petitioner filed its petition seeking invalidity based on lack of written description,…
PTAB – Ford is not barred from challenging a patent on a hybrid vehicle based on the unproven assertion that it breached an agreement not to challenge the patent
In Ford Motor Company v. Paice LLC & The Abell Foundation, Inc., Ford filed a petition seeking inter partes review of U.S. Patent No. 8,214,097 relating to a hybrid vehicle having, among other things, both an internal combustion engine and an electric motor. IPR2014-00570. On September 30, 2014, the Board…
PTAB – Trulia and Zillow possible merger is not a sufficient basis for extending the 12 month period to complete the trial
In Trulia, Inc. v. Zillow, Inc., Trulia filed a petition seeking covered business method review of U.S. Patent No. 7,970,674 relating to automatically determining a current value for a real estate property. CBM2013-00056. On March 10, the Board instituted a trial on the ‘674 patent and set a hearing date…
The PTAB rejects Microsoft’s attempt to institute an IPR proceeding almost 7 years after being served with a complaint involving the patent-at-issue
In Microsoft Corporation v. Virnetx Inc., Microsoft filed a petition seeking inter partes review of U.S. Patent No. 7,188,180 (“the ‘180 patent”) on May 19, 2014. The ‘180 patent was asserted in a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:07-cv-00080 (E.D. Tex. filed April 5, 2007) (“the…