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Articles Posted in Inter Partes Review

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PTAB: Claims for Method of Authenticating a Website are Patentable under Alice and Section 101

In a CBM petition filed by petitioners PNC Bank, U.S. Bank, and Bancorp, the petitioners sought review of U.S. Patent No. 7,631,191, which claims a method of authenticating a web page. The petition challenged the validity of claims under Section 101, 103 and 112. After finding that the ‘191 patent…

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Reliance on the Same Prior Art Dooms Medtronic’s Attempt to Correct its Previously Rejected IPR Petition

In IPR proceeding involving Medtronic, Inc. v. NuVasive. Inc., the petitioner, Medtronic, file a petition seeking review of U.S. Patent No. 8,361,156 relating to a spinal implant and methods of spinal fusion using the implant. The petition was Medtronic’s third IPR petition challenging the validity of claims in the ‘156…

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Controlling, or Having the Ability to Control, the Preparation of a Petition Leads to a Finding that the Non-Party Is a Real Party-In-Interest and that the Petition is Time Barred

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,…

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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…

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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…

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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…

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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…

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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…

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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,…

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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…

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