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In IPR2015-00838 and IPR2015-00840, Petitioner Tristar Products, Inc. (“Petitioner”) filed petitions to instituted IPRs of certain claims of U.S. Patent Nos. 8,485,565 and 8,622,441 owned by Choon’s Design, LLC (“Patent Owner”). Previously, the Patent Owner had sued the Petitioner on the ‘565 and ‘441 patents. The issue was whether was whether the petitioner can rely upon date of service of the complaint set forth in the proof of service filed by the patent owner in satisfying the time limitations set forth in 35 U.S.C. § 315(b), which precludes institution of an IPR “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The unexpected answer was no and, as a result, the PTAB did not institute IPR proceedings involving the ‘565 and ‘411 patents.
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In Deep Sky Software, Inc. v. Southwest Airlines Co., Defendant Southwest Airlines (“Southwest”) sought its fees and costs following the successful inter partes review of the patent-in-suit, which resulted in all of the asserted claims being invalidated. Among the fees and costs Southwest sought were those related to the filing and prosecution of its IPR petition. Undaunted by the absence of other district court rulings awarding such fees, the district court nonetheless awarded Southwest nearly $400,000 in attorneys’ fees and costs, most of which was related to the IPR proceeding.
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In IPR2015-00821, Petitioner Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., sought to join its Petition with a recently initiated IPR proceeding involving the same patent, parties, and counsel. The patent at issue, U.S. Patent No. 8,532,641, is directed to a music enabled communication system. Specifically, Petitioner requested inter partes review of claims 1-3, 5-7, 9, and 10 of the ‘641 patent using two new references, Ushiroda and Bork, in combination with references Ito, Haartsen, Rydbeck, Nokia, and Galensky, previously relied upon in IPR2014-01181. Pet. 14-46; Motion for Joinder 2-3. The Petitioner conceded that, absent joinder, the institution of inter partes review would be barred under 35 U.S.C. § 315(b) because the petition was filed more than 1 year after the date on which it had been served with a complaint alleging infringement of the ‘641 patent.

As explained below, the Board exercised its discretion to deny the Petitioner’s motion finding that Petitioner had not provided sufficient justification for the delay in asserting the new grounds of invalidity in the current petition. As such, the Petition was merely an attempt for the Petitioner to obtain a “second bite at the apple,” which runs contrary to the Board’s mandate to provide just, speedy, and an inexpensive resolution of the proceedings under 37 C.F.R. § 42.1(b).
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In IPR2014-01201, Patent Owner ThermoLife International, LLC sought discovery regarding whether Purus Labs, Inc., a company related to the Petitioner John’s Lone Star Distribution, Inc., should have been identified as a real party-in-interest. Specifically, the Patent Owner sought documents:

(1) “showing the corporate and management structure of Purus Labs, including any Lone Star personnel who participate in the management or corporate decision-making of Purus Labs,”

(2) “identifying the persons who provided direction to, or had the authority to provide direction to, Lone Star’s counsel in this IPR, including the persons who reviewed, or were given the opportunity to review, the papers filed in this IPR,” and
(3) “showing communications by or to directors, officers, or executives of Purus Labs and Lone Star regarding this IPR, including any Purus Labs Board minutes regarding such communications.”

As explained below, the Board ultimately granted limited documentary discovery of Petitioner on this issue, but denied for the time being any depositions.
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On October 13, 2014, The Brinkman Corporation filed a petition for Inter Partes Review of U.S. Patent 8,381,712 directed to a barbecue grill that allows simultaneous gas grilling and charcoal-fueled grilling. A&J Manufacturing, the owner of the ‘712 patent, challenged Petitioner’s standing to file the IPR based on the fact that the Petition was filed more than one year after the Petitioner received a copy of the complaint filed in a district court alleging infringement of the ‘712 patent or, alternatively, that the Petition was filed more than one year after the service of an ITC Complaint alleging infringement of the ‘712 patent. The Board rejected the Petitioner’s arguments and held that the relevant start of the one year time bar under 35 U.S.C. § 315(b) is the date when the waiver of service of the complaint executed by the Petitioner was filed with the district court. Based on this date, the Petition was filed within the allotted time.

Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
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In IPR2014-00727, Petitioner C&D Zodiac, Inc. seeks review of U.S. Patent No. 8,590,838 owned by B/E Aerospace, Inc. The ‘838 patent relates to a “spacewall” lavatory. In connection with the IPR proceeding, the Petitioner sought, as “Routine Discovery,” documents that it contends are inconsistent with positions the Patent Owner has advanced in the IPR. The Board granted the discovery over the Patent Owner’s opposition.

Pursuant to 37 C.F.R. § 42.51(b)(1)(iii), “[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency.”
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In MLC Intellectual Property, LLC v. Micron Technology, Inc., Case No. 14-cv-3657 (N.D. Cal.), MLC filed its lawsuit on August 12, 2014, accusing Micron of infringing U.S. Patent No. 5,764,571 (“the ‘571 patent”). On October 15, 2014, Micron answered the complaint and asserted counterclaims for declaratory judgment of non-infringement and invalidity of the ‘571 patent. At the initial case management conference on November 21, 2014, the Court set a further case management conference for March 20, 2015, the tutorial hearing for June 10, 2015, and the claim construction hearing for June 17, 2015.

On December 24, 2014, Micron filed a petition for inter partes review (“IPR”) at the U.S. Patent and Trademark Office (“PTO”), challenging the patentability of at least each asserted claim of the ‘571 patent. The PTO accorded the IPR petition a filing date of December 24, 2014, and thus the PTO must issue a decision on whether to institute the IPR no later than June 24, 2015. On December 29, 2014, Micron filed its motion to stay pending the IPR. In its motion, Micron sought a stay through a final written decision of the IPR including any appeals to the Federal Circuit. MCL partially opposed only the portion of the stay beyond the final written decision of the PTO rather than after all appeals have been exhausted. MCL also argued that the case should not be stayed at this time until after the claim construction was completed.
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In IPR2014-01510, 01511, and 01513, in connection with its preliminary response the Patent Owner Mag Aerospace Industries, LLC, submitted an expert report by its expert in the related litigation. The expert report addressed issues relevant to the IPR proceedings, including the patentability of the claims in light of the prior art asserted in the IPRs. As explained below, the Board held that the expert report constituted “new” evidence and thus violates 37 C.F.R. § 42.107(c) even though it was created for the related litigation and not expressly for the IPR proceedings.

The Petition was filed on September 16, 2014. The expert report, filed as Exhibit 2002, is dated November 4, 2014, and was filed on January 2, 2015, along with the Patent Owner’s Preliminary Response. It also is uncontested that the expert report was created for related litigation according to the schedule for that litigation.
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In IPR2013-00357, Patent Owner Overland Storage, Inc. filed a request for rehearing of the final written decision holding that claims 1-11 of U.S. Patent No. 6,328,766 are unpatentable. The basis for the patent owner’s reconsideration request was that, among other things, the petitioner failed to meet its burden of proof because it offered no expert testimony. As explained below, the Board rejected this position and held that a lack of expert testimony is not dispositive.
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In IPR2014-00739 involving petitioner Shire Development LLC and patent owner LCS Group, LLC, the petitioner sought authorization to file a motion for sanctions against the inventor based on his communications with petitioner in violation of a prior order from the Board. The Board’s prior order stated that “the inventor, Dr. Louis Sanfilippo, is prohibited from contacting Shire, Shire’s employees, the expert retained by Shire for this proceeding (Dr. Timothy Brewerton), and counsel for Petitioner, except through counsel for Patent Owner or in the presence of counsel for Patent Owner.” Paper 9. According to the Petitioner, “the [inventor’s] e-mail, as well as the hyperlink contained within the e-mail, contained misrepresentations, and constituted harassment, as well as veiled threats against Petitioner.”

The Petitioner also sought an adverse judgment based on a statement in the e-mail that “Patent Owner has determined that in order to best protect its interests it is foregoing any further involvement in the IPR process so that it can take the appropriate actions, including legal remedies, to resolve such representations made to the Board that have now caused Patent Owner harm, and so that it can pre-empt further harm from the undue burden of such representations.”
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