Articles Posted in Inter Partes Review

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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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In the Macronix International Co., Ltd. et al. v. Spansion LLC, the PTAB denied Petitioner’s motion for joinder under Section 315(c). On November 8, 2013, the Petitioner filed a petition for inter partes review of U.S. Patent No. 7,151,027 (“the ‘027 patent”), which was later granted on May 8, 2014. Subsequently, on June 4, 2014, the Petitioner filed a second petition for inter partes review of the ‘027 patent. At that time, the Petitioner also moved to join the two IPR proceedings and proposed a revised schedule in the event its motion for joinder was granted.

The Board explained the factors establishing entitlement to joinder:

As the moving party, Petitioner has the burden of proof in establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for joinder should: (1) set forth the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15, 4 (Apr. 24, 2013).

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In the Ariosa Diagnostics v. ISIS Innovation Limited inter partes review, the PTAB set for the guidelines for taking depositions in a foreign language as required by 37 C.F.R. § 42.53(c). In addition to the requirement of 42.53(c) that the party calling the witness must initiate a conference with the Board at least five days before the deposition, the Board directed the parties to the following guidelines:

In the guidelines below, “party” refers to the party proffering the witness, and “opponent” refers to the party cross-examining the witness.
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In CTP Innovations, LLC v. Solo Printing, Case No. 1:14-cv-21499-UU, the Court denied, without prejudice, Defendant’s motion to stay the litigation pending the inter partes review of the two patents-in-suit.

In its motion to stay, the Defendant argued the traditional factors considered by court favored a stay, including that the USPTO’s analysis will simplify the issues in litigation because third party petitions have challenged all claims of the asserted patents, that the case was in its earliest stages having just been filed a little over two months ago, and that there would be no prejudice to the plaintiff because, as a non-practicing entity, it does not compete in the marketplace with the Defendant and thus any infringement, if proven, could be adequately remedied by monetary damages.
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In IPR2014-00954, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Petravick, Deshpande, and Clements) issued a decision regarding the proper identification of lead and backup counsel listed in the powers of attorneys in cases involving multiple parties constituting a single Petitioner. The Board explained:

According to 37 C.F.R. § 42.2, “Petitioner” means “the party filing a petition requesting that a trial be instituted.” In circumstances not involving a motion for joinder or consolidation of separate proceedings, for each “petition” there is but a single party filing the petition, no matter how many companies are listed as petitioner or petitioners and how many companies are identified as real parties-in-interest. Thus, before the Board, the separate companies constitute and stand in the shoes of a single “Petitioner.” Because the eleven companies constitute, collectively, a single party, they must speak with a single voice, both in writing and oral representation.
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In this patent infringement case, Plaintiff, CTP Innovations, LLC (“CTP”) sued V.G. Reed and Sons, Inc. (“Reed”) to stop Reed’s alleged infringement of two United States patents, which pertain to systems and methods of providing publishing and printing services by a communication network involving computer to plate technology.

Reed moved for a stay of the action pending a determination of an inter partes review (“IPR”) before the Patent Trial and Appeal Board (the “PTAB”). In the motion, Reed asserted “that the stay is appropriate because the PTAB’s resolution of invalidity issues regarding the two patents will simplify the instant action and no party will be prejudiced by the stay.
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Boku, Inc. (“Boku”) filed a CBM petition with the PTAB seeking review of the patentability of Plaintiff’s U.S. Patent No. 7,273,168 (the “‘168 patent”). The petition challenged all claims of the ‘168 patent on grounds that they are indefinite, or anticipated by or rendered obvious by one or more of four prior art references not considered by the Patent Office during prosecution of the patent -in-suit.

Boku moved to stay the litigation pending the CBM review based on Section 18(b) of the America Invents Act (“AIA”). As explained by the district court, this statute requires the court to weigh four factors when determining whether to stay litigation pending CBM review, including (1) whether a stay, or denial thereof, will simplify issues and streamline the trial, (2) whether discovery is complete and whether a trial date has been set, (3) whether a stay, or denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party, and (4) whether a stay, or denial thereof, will reduce the burden of litigation on the parties and the court.
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Petitioner, BlackBerry Corporation and BlackBerry Limited (“Blackberry”), filed a petition on October 30, 2012, for an inter partes review (“IPR”) of claims 1-12 of US Patent No. 6,871,048 (“the ‟048 patent”). On March 18, 2013, the Board instituted trial on claims 1-12 of the ‟048 patent based on all grounds of unpatentability alleged in the petition.

After institution of trial, Patent Owner, MobileMedia Ideas LLC (“MobileMedia”), filed a patent owner response, Blackberry filed a reply, and an oral hearing was held on October 18, 2013. On December 16, 2013, the parties filed a joint motion to terminate the IPR proceeding, which the PTAB only granted in part, terminating the proceeding with respect to Blackberry, but not with respect to MobileMedia.
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Personalized Media Communications, LLC “PMC”) filed a patent infringement action against Zynga, Inc. (“Zynga”). Prior to trial, PMC sought to use an exhibit created by Ocean Tomo, entitled “Patent Quality Inventor Study.” The study purported to rank “John Harvey (the inventor of the patents in suit) as the “top rated inventor” in the “wireless” invention category.” Zynga moved to exclude the study.

In response, PMC asserted that the exhibit was properly offered “as a secondary consideration of nonobviousness – specifically, praise by others.” The district court disagreed and found that the potential for unfair prejudice was high. “The Court notes that the study does not pertain specifically to any of the patents-in-suit, much less the asserted claims. The Court finds that the probative value of the study is minimal, as it lacks the requisite nexus to the claims at issue in this case. See, e.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988). Similarly, the potential for unfair prejudice is high.”
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