Inter Partes Review (“IPR”) continues to serve as a cost-effective vehicle for invalidating patents at the USPTO’s Patent Trial and Appeal Board’s (“PTAB”). As one recent example, Fellowes, Inc. (“Fellowes”) sued paper shredder rival ACCO Brands Corp. (“ACCO”), alleging that ACCO’s shredders infringed six of Fellowes’s patents. ACCO turned the tables on Fellowes, however, by filing an IPR Petition seeking to invalidate U.S. Patent No. 8,464,767 (“the ’767 patent”) and an IPR was ultimately instituted by the PTAB. As a result, ACCO was successful in staying costly multi-patent litigation pending the outcome of the IPR—a forum which has proved to be favorable to patent challengers in many respects.
In Facebook v. Software Rights Archive, three online service companies challenged two Software Rights’ patents –5,832,494 (“the ʼ494 patent) and 6,233,571 (“the ʼ571 patent”) – in three separate Inter Partes Reviews (IPR). (IPR2013-001479, 00480, and 00481). The claims at issue relate to improved methods for indexing and searching databases. The majority of the claims were found unpatentable, but claims 1, 5, 15, and 16 of the ‘494 patent and claim 21 of the ‘571 patent were ruled nonobvious.
In a recent Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (the Board), Cardiocom, LLC (Cardiocom) successfully invalidated all 37 challenged claims of U.S. Patent No. 7,516,192 B2 (the ‘192 patent) held by Robert Bosch Healthcare Systems, Inc. (Bosch). Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc. (IPR2013-00468, Paper 72, January 27, 2014). The ‘192 patent relates to a network system for remotely monitoring individuals and for communicating information to the individuals through the use of script programs. Applications of the ‘192 patent include remotely monitoring patients and providing interactive response systems.
In recent inter partes review (“IPR”) decisions, the Patent Trial and Appeal Board (“PTAB”) has consistently held that patent owners have failed to provide sufficient evidence of secondary considerations in support of patent validity. Cardiocom, LLC v. Robert Bosch Healthcare Systems, Inc. (IPR2013-00431, paper No. 67, January 15, 2015) continues this trend. In Cardiocom, the PTAB considered and rejected all five of the patent owner’s secondary considerations arguments, ultimately invalidating the patent at issue.