Greenblum & Bernstein, P.L.C.

REEXAMINATION AND POST-GRANT

PRACTICE GROUP NEWSLETTER

keePing TABs  No. 12

                                                                                            October 2013   

In This Issue

·   Ongoing Tally of Filed IPR and CBM Petitions

·   Recent Refusals To Institute

·   Other Matters of Interest at the PTAB

·   PTAB Trial Section Judges

Contact Us:

Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

703-716-1180 (fax)

Ongoing Tally of Filed IPR and CBM Petitions

Since September 16, 2012, 581 petitions have been identified in the PTAB’s listing of proceedings for inter partes review (“IPR petitions”) and post grant review against certain patents directed to covered business methods (“CBM petitions”).  During FY 2013 (October 1, 2012 through September 30, 2013), there were 511 IPRs and 45 CBM petitions filed.  During September, 2013, 72 petitions for IPR and 5 petitions for CBM were filed.

Of the 72 IPR petitions filed in September:

·       Ten (10) petitions were filed targeting patents of Bonutti Skeletal Innovations, LLC, 6 by Smith & Nephew, Inc., 3 by Arthrex, Inc. and 1 by Linvatec Corp.;

·       Samsung Electronics Co. Ltd. and Samsung Electronics America Inc., in aggregate, filed 8 petitions, 5 against patents of Virginia Innovation Sciences, Inc, 1 against a patent owned by Boston University, and 2 against patents owned by LED Tech Development, LLC.;

·       Zoll Lifecor Corp. filed 8 petitions, 5 against patents owned by Koninklijke Philips Electronics N.V. and 3 against patents owned by Philips Electronics North America Corporation;

·       Sealed Air Corporation targeted patents owned by Pregis Innovative Packaging Inc. in 5 petitions;

·       Microsoft Corp. targeted patents owned by Enfish, LLC in 5 petitions; 

·       Baxter Healthcare targeted patents owned by Millennium Bilogix, LLC in 4 IPR proceedings; and,

·       Yamaha Corp. of America targeted patents owned by Black Hills Media, LLC in 4 IPR proceedings.

The 77 total filings in September were made by 34 filers.  Fourteen (14) filers filed multiple petitions, accounting for 57 proceedings.

Please click here for the latest spreadsheet reflecting all filings through October 1, 2013.

Thirty (30) proceedings were instituted in September, bringing the total to 193 proceedings instituted.  Three (3) proceedings were denied institution in September (discussed below), bringing to 29 the number denied.  Nineteen (19) proceedings have been terminated by settlement, one was terminated based on a patent owner’s refusal to participate, and one was dismissed.

Recent Refusals to Institute

The PTAB recently refused to institute the following proceedings:

• Accord HealthCare, Inc., USA v. Eli Lilly & Company, Case IPR2013-00356 (October 1, 2013) (Fitzpatrick, Elluru and Kamholz).  The PTAB refused to institute this proceeding as time-barred under 35 U.S.C. § 315(b).  The PTAB made clear that the one year time limit to institute an inter partes review proceeding starts to run from the time the first complaint is served (where there are multiple actions instituted).  Here, Eli Lilly served Accord with a district court complaint alleging infringement of the patent-at-issue on January 23, 2012 and initiated a second civil action, and served the second complaint, on March 7, 2013.  The earlier complaint was served more than one year before Accord filed the present petition and, thus, 35 U.S.C. § 315(b) bars this proceeding. 

• Anova Food, LLC v. Sandau, et al., IPR2013-00114 (September 13, 2013) (Medley, Green and Fitzpatrick).  Here, the PTAB refused to institute the proceeding based on the time-bar of 35 U.S.C. § 315(a)(1) and the conclusion that the instant petitioner and the prior litigant were the “same entity” for purposes of § 315(a)(1). 

• Section 315(a)(1) bars an inter partes review if the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent before the date on which the petition for inter parties review has been filed.  Here, the Board concluded that Anova LLC did not meet its burden of establishing that it is not barred under §315(a)(1) from proceeding with the instant action.  Anova Food, Inc. filed – but never served - three complaints in district court challenging the validity of the ‘401 patent on (i) March 25, 2003; (ii) August 1, 2003; and (iii) March 18, 2004. 

• Anova Food LLC first argued that § 315(a)(1) should be interpreted as barring a subsequent inter partes petition only if the earlier complaint had been “filed and served.”  The Board declined to read the “served” limitation into the statute, finding that the statutory language was clear on its face, particularly in view of the “served” requirement recited in § 315(b).

• Anova next argued that Anova Food Inc. and Anova Food LLC were not the same entity.  Patent Owner, however, asserted, and the Board agreed (after extensive briefing), that Anova Food LLC is a successor to Anova Food, Inc., such that the actions by Anova Inc. may be imputed to Anova LLC and thus bar the instant proceeding under § 315(a)(1).  In determining the issue of successor liability, the Board applied the state law of Florida because it is Anova’s principal place of business.  The Board concluded that the successor corporation was a mere continuation in business of the first because the two corporations shared the same officers, customers, products and only switched the new corporate form in the same location.

• ZTE Corporation and ZTE (USA) Inc. v. ContenGuard Holdings Inc., Case IPR2013-00454 (September 25, 2013) (Lee, Kim, and Zecher).  The PTAB refused to institute inter partes review based on several grounds, citing 35 U.S.C. § 325(d), which permits the Office to take into account “whether the same prior art or arguments previously were presented to the Office.”  The Board simultaneously refused to join this proceeding to an earlier proceeding because the earlier proceeding had already terminated by judgment at the patent owner’s request. 

• ZTE filed a prior petition against claims 1-38 of the ‘160 patent, but the Board initiated that proceeding against only claims 12-22 and 30-38.  In the prior proceeding (IPR2013-134), Patent Owner requested and was granted adverse judgment and ZTE did not file a request for rehearing.

• The Board declined to permit ZTE to file yet another petition directed to claims 1-11 and 23-29, given its past unsuccessful attempt to invalidate these claims.  The Board pointed out that the instant petition was untimely under 35 U.S.C. § 315(b) (it was outside the 1 year time period) and the prior proceeding had been terminated and the motion for joinder to this proceeding was also denied.  The Board indicated that it would be “unjust and inequitable to subject the Patent Owner to a new challenge by a Petitioner who unsuccessfully had attempted to institute inter partes review on the claims in a previous petition, if the second petition is not itself filed within the one-year period provided in 35 U.S.C. §.315(b) and if a joinder motion has been denied.”  Id. at page 5.     

• ATAS International, Inc. v. Centria, IPR2013-00259 (September 24, 2013) (Medley, Bisk, and Ward).  The PTAB declined to institute the inter partes review because it concluded that ATAS did not satisfy its burden to show, under 35 U.S.C. § 314(a), that there is a reasonable likelihood that it would prevail with respect to the ‘834 patent’s single claim.  The ‘834 patent is a design patent directed to an ornamental design for a building panel.  In making its determination, the Board used the “ordinary observer” test to analyze claim construction and anticipation issues in accordance with Egyptian Goddess, Inv. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008).  In analyzing obviousness, the Board determined “whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.”  Id., at page 7 (quoting Apple, Inc. v. Samsung Elecs. Col, Ltd., 678 F.3d 1314 (Fed. Cir. 2012).      

Other Matters of Interest at the PTAB

SAP AMERICA, Inc. v. Versata Development Group, Inc., CBM2012-00001, the first AIA post-grant proceeding to progress to oral hearing and decision, established another first on September 13, 2013 when the panel (Medley, Tierney and Elluru) denied Versata’s request for rehearing.  The opinion (1) refused to address, as waived, Versata’s arguments asserting that the subject patent is not a covered business method patent, that claim and issue preclusion barred review, and that 35 U.S.C. § 101 is not a permissible basis for review; (2) maintained its reliance on the “broadest reasonable interpretation” standard  as the appropriate mode of claim construction in inter partes proceedings and its position that the interpretation applied was reasonable; and (3) adhered to its position that claims 17 and 26-29 of the subject patent do not recite patent eligible subject matter.

Motions for joinder were granted in:

• Sony Corp. of America and Hewlett-Packard v. Network-1 Security Solutions, Inc., IPR2013-00495, (Paper No. 13, entered September 16, 2013) (Lee, Chang and Arbes), joining that proceeding with Avaya Inc. and Dell Inc. v.  Network-1 Security Solutions, Inc., IPR2013-00071, Dell having previously been joined by way of petition filed in IPR2013-00385, Paper 17, which latter proceeding, per the Board, was in turn terminated under 37 CFR 42.72.  The order is of interest because of the limited role agreed to by Sony and Hewlett-Packard, provided that Avaya and Dell do not settle with the patent owner.

• Sony Corp. v. Yissum Research Development Company of the Hebrew University of Jerusalem, IPR2013-00326 (Paper No. 15, entered September 24, 2013)(Medley, Easthom and Arpin)(attacking patentability of claims 4, 5 and 34),  joining that proceeding with Sony Corp. v. Yissum Research Development Company of the Hebrew University of Jerusalem IPR2013-00218 (attacking patentability of claims 1-3 and 22).

PTAB Trial Section Judges

Docket assignments continue to show a heavy load of cases assigned to several experienced inter partes APJs, as reflected in the list below drawn from the spreadsheet, but with increasing numbers being assigned to more recently appointed Board members.. These numbers do not reflect decreases as a result of terminations or assignment of proceedings to another APJ for authoring an opinion.