Articles Posted in Discovery

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, lack of enablement, indefiniteness and obviousness. On October 7, 2014, the Board denied the CBM review finding that the petitioner failed to establish that the claimed inventions were not technological inventions under 37 C.F.R. § 42.301(a). Notably, the Board’s decision was made without any briefing from the patent owner on this issue, who elected not to file a preliminary response.

In reaching its decision to deny CBM review, the Board rejected the petitioner’s argument that the ‘894 patent does not recite a technological invention because “claim 2 recites only known technologies, such as a processor, a machine readable storage device, a signal, an application, a network, the Web, an object, and a data structure.” The petitioner further argued that the ‘894 patent recites a combination of structures that achieve normal, expected and predictable results by “allowing a user to complete from a Web application the types of transactions he or she can already perform in person.”
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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 of November 19, 2014. On July 28, 2014, the Parties publicly announced a merger, which is expected to close sometime in 2015. However, the merger is currently pending review by the FTC, whose review is dictated by the Hart-Scott-Rodino Antitrust Improvements Act under 15 U.S.C. § 18(a). Under this section the initial waiting period expired on September 3, 2014.

In light of the merger, on August 18, the parties filed a joint motion to request to extend the dates by one year, but no less than six months in view of the FTC’s review and expected approval of the merger. The PTAB asked the parties to supplement their motion after the expiration of the initial waiting period. On September 3, the FTC extended the waiting period in a second request for information regarding the merger. On September 12, the parties filed a supplemental notice to provide additional information requested by the Board, including whether the extent to which the parties are bound by the merger agreement and an explanation regarding why the parties are unable to settle this proceeding in an agreement that takes into account the likelihood of FTC approval. Following the Parties’ submission, the Board denied both a 1-year extension and an extension of six months.
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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 2007 complaint”), and a complaint for VirnetX Inc. v. Microsoft Corp., Case No. 6:10-cv-00094 (E.D. Tex. filed March 17, 2010) (“the 2010 complaint”). The ‘180 Patent also is involved in VirnetX Inc. v. Microsoft Corp., Docket No. 6:13-cv-00351 (E.D. Tex.) (“the 2013 complaint”) as well as other pending litigation, two inter partes reexaminations (one concluded and one pending), and a second, concurrently filed inter partes review.

The issue before the Board was whether Section 315(b)’s one year time limitation to file a petition after being served with a complaint barred Petitioner’s IPR in light of the 2007 and 2010 complaints or whether the time should run from the service of the 2013 complaint:

Petitioner was served with a complaint alleging infringement of the ‘180 patent on three occasions. The first complaint (i.e., the 2007 complaint) was served on April 5, 2007, and the second complaint (i.e., the 2010 complaint) was served on March 17, 2010. The 2007 complaint and the 2010 complaint were both served more than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review (February 4, 2014). The third complaint (i.e., the 2013 complaint) was served less than one year prior to the date on which the Petitioner filed the present Petition requesting inter partes review…As described above, 35 U.S.C. § 315(b) states that an inter partes review may not be instituted if the petition is filed more than one year after the date of service on Petitioner of a complaint alleging infringement of the patent.

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In Coho Licensing LLC v. Glam Media, et al., Coho filed suits against defendants AOL Inc. (“AOL”), Glam Media Inc., Ning Inc., LinkedIn Corp., Rovi Corp., and Twitter, Inc. (collectively referred to as “Defendants”). On May 16, 2014, AOL filed petitions for IPR challenging the validity of all the claims of two of the three asserted patents, and, on June 17, 2014, AOL filed a petition for IPR challenging the validity of all claims of the third patent. Defendants subsequently moved to stay the above captioned cases pending the IPR. As summarized below, the Court granted AOL’s motion to stay and granted the motions of the remaining defendants on the condition that they agree “to be estopped from asserting any invalidity contention that was actually raised and finally adjudicated in the IPR proceedings.”
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In the Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc., the Patent Owner moved for additional discovery to depose a third party witness whose declarations were relied upon by Petitioner in its Reply to the Patent Owner’s Response. The witness originally submitted declarations in reexamination proceedings involving a patent related to the challenged patent.

In its motion, the Patent Owner argued that the Garmin factors each strongly support granting the deposition. In particular, the Patent Owner argued that ” (Factor 1) there is credible, concrete evidence (more than a possibility and mere allegation) that the deposition of [the witness] will provide significant evidence regarding the non-obviousness of and teachings away from the invention in the [challenged] patent;” that (Factor 2) the deposition does not seek Petitioner’s litigation positions or their underlying basis;” that (Factor 3) the “Patent Owner has no ability to obtain information from [the witness] by other means;” that “(Factor 4) the deposition will follow common deposition protocols and easily understandable instructions;” and, that “(Factor 5) the deposition only requires production of [the witness] and is not overly burdensome.
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In inter partes proceeding Apple Inc. v. Rensselaer Polytechnic Institute et al., IPR2014-00320, Petitioner Apple sought a second request for rehearing, before an expanded panel of the PTAB, on the Board’s decision not to institute an inter partes review of RPI’s U.S. Patent No. 7,177,798 (“the ‘778 Patent”). The Board held that Apple’s request was unauthorized and therefore ordered it expunged from the record of the proceeding.

On January 3, 2014, Apple initially filed its IPR petition seeking invalidity of the ‘798 Patent based three pieces of prior art that Apple alleged anticipated and/or rendered obvious certain claims of the ‘798 Patent. On April 17, 2014, RPI filed its preliminary response asserting that the Board should deny the petition just as it denied Apple’s first petition for inter partes review of the ‘798 Patent. In its preliminary response, RPI asserted that the Board already considered (and rejected) the same grounds and prior art that Apple now relies on in the second petition. Accordingly, RPI argued that the second petition should be denied because “[t]he Board denied the first petition [which included the same prior art asserted in the second petition] as to all challenged claims because Apple failed to establish that it would prevail in showing that even a single claim of the ‘798 Patent is unpatentable.”
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