In a recent Order, the Board authorized patent owner, Motion Games, LLC, to file a motion to terminate the proceedings because petitioner, Nintendo of America, Inc, allegedly failed to list all real parties-in-interest in three inter partes review (“IPR”) petitions.
35 USC 312(a)(2) requires a petitioner to identify all real parties-in-interest (“RPIs”) in an inter partes review proceeding. In Nintendo of America, Inc. v. Motion Games LLC. (IPR2014-00164-66), Nintendo filed three IPRs against three different patents on November 19, 2013. The three patents are concurrently being asserted against Nintendo in a district court litigation in the Eastern District of Texas, in Motion Games, LLC v. Nintendo Co., LTD; Nintendo of America Inc.; Retro Studios, Inc.; Rent-A-Center, Inc.; and Gamestop Corp. (Case No. 6:12-cv-878) (E.D. TX). In the district court litigation, Nintendo of America, Inc., along with Nintendo Co., LTD, Retro Studios, Inc., Rent-A-Center, Inc., and Gamestop Corp. are named defendants. In the IPRs, Nintendo Co., Ltd. and Nintendo of America Inc. are the only named real parties-in-interest.
Ariosa Diagnostics v. The Board of Trustees of the Leland Stanford Junior University. (IPR2013-00308, Paper No. 40, November 19, 2014)
In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB) found that while only some of the grounds of unpatentability were sufficient to meet the “preponderance of the evidence standard” for determining claims unpatentable, all of the claims reviewed were found to be unpatentable. In its decision, the PTAB construed multiple claim terms using the Broadest Reasonable Interpretation (BRI) before determining that all of the claims were unpatentable as being either anticipated or obvious in view of the cited references. Ariosa at 37.
SDI Technologies, Inc. filed an inter partes reviews (IPR) of U.S. Patent No. 8,364,295 (IPR2013-00465). IPR2013-00465 is one of a few IPRs filed by SDI against this family of patents. U.S. Patent No. 8,364,295 (“the ‘295 patent”) is owned by Bose Corp. and relates to an audio system for reproducing sound from computer files and computer network radio stations, such as the Bose Wave® radio shown above.
Succeed where others fail: PTAB reaches a different conclusion on the same prior art in different proceedings
On November 21, 2014, the PTAB denied Mitsubishi’s petition for a rehearing of the board’s decision denying institution of an inter partes review against some claims of Celgard’s U.S. Patent No. 6,432,586 (“‘586 Patent”) directed to a lithium battery. Specifically, in support of its IPR petition, Mitsubishi provided an expert report from Kuzhikalail Abraham who argued that the Tojo reference invalidated some of the claims in the ‘586 patent. The board, however, denied to institute the IPR on the basis that Mitsubishi failed to show that Tojo “blocks dendrite growth” in the battery as required by the ‘586 Patent.
In Verstata Software, Inc. v. Callidus Software, Inc., 2014-4682 (November 20, 2014), the Court of Appeals for the Federal Circuit reversed the District of Delaware’s denial of a motion to stay the district court case during a transitional Covered Business Method (CBM) Review. The decision shows how valuable a CBM proceeding can be for a defendant accused of infringing a business method patent.
In a recent Inter Partes Review (IPR) proceeding, patent owner Click-To-Call Technologies LP failed in its attempt to prevent the institution of an IPR of U.S. Patent No. 5,818,836 sought by petitioner YP Interactive LLC. 35 U.S.C. § 315(b) bars a petitioner from pursuing an IPR of a certain patent if that petitioner was served with a complaint alleging infringement of that certain patent more than one year before the petition was filed. Here, the PTAB instituted the IPR even though YP Interactive’s predecessor was previously sued in 2001 for allegedly infringing the ‘836 Patent. (Pp. 12-13).
The Patent Trial and Appeal Board (PTAB) recently entered final written decisions in Ariosa Diagnostics v. Verinata Health, Inc., IPR 2013-00276, Paper No. 43 (“Ariosa”) and Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. IPR2013-00290, Paper No. 45 (“Athena”) that denied grounds based on anticipation and obviousness. These decisions emphasized a similar analytical shortcoming the Petitioners’ invalidity analyses ̶ how a person of ordinary skill in the art would have combined the cited prior art elements to arrive at the claimed invention. As quoted in Ariosa, “[a] brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.” DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (Fed. Cir. 1999).
In two related inter partes review final written decisions, the PTAB relied on extrinsic evidence to invalidate patent claims. In Mobotix Corp. v. e-Watch, Inc., Petitioner Mobotix Corp. challenged the validity Patent Owner E-Watch, Inc.’s U.S. patents 7,023,913 and 7,733,371, related to digital security multimedia sensors. (Cases IPR2013-00334, Paper No. 5; IPR2013-00337, Paper No. 5) The Petitioner asserted that the claims of the challenged patents were unpatentable as obvious over various combinations of prior art references. (Id. at p. 3) The PTAB granted institution of the IPRs based on most of the Petitioner’s asserted grounds of unpatentability and ultimately found the challenged claims unpatentable over the asserted prior art combinations. (Cases IPR2013-00334, Paper No. 14 at p. 24; IPR2013-00337, Paper No. 12 at pp. 29-30).
Carefully “Stitching” Together a Declaration Can Help Increase the Odds of Success During IPR Proceedings
Declarations can play a critical role in an Inter Partes Review (“IPR”) proceeding. To date, most IPR petitions filed with the Patent Trial and Appeal Board (“PTAB”) have included a supporting declaration. Further, the PTAB often relies heavily on such declarations in deciding IPR petitions.
In the final decisions issued on September 18, 2014 for two related proceedings, the Patent Trial and Appeal Board considered motions to exclude evidence involving webpage printout documents from Wikipedia and Webopedia. See SAP America, Inc. v. Lakshmi Arunachalam (CBM2013-00013, Paper No. 61, pp. 27-29) and SAP America, Inc. v. Lakshmi Arunachalam (IPR2013-00194, Paper No. 67, pp. 33-34). In the two proceedings, a Wikipedia article titled “Web application” was used by the patent owner to help define what the term “Web application” means for claim construction purposes, and a Webopedia article titled “The Difference Between the Internet and World Wide Web” was used to support the patent owner’s distinction between the terms “internet” and “world wide web”. The petitioner moved to exclude these webpage printout documents along with other documents, arguing that these documents are unauthenticated and that a statement by the inventor that each of the documents is a true, authentic, and correct copy of the original document is insufficient for authentication.