January 13, 2016Newsletter

This Week at the Board - January 13, 2017

Board Denies Patent Owner’s Motion to Exclude District Court Claim Interpretation Documents

In IPR2015-01456, the Board issued a final written decision finding that all challenged claims were unpatentable.  In the trial phase, the Patent Owner (Metaswitch Networks Ltd.) filed a Motion to Exclude Evidence seeking to exclude, among other things,  claim interpretation documents from the related district court action because the broadest reasonable interpretation (BRI) standard is not used in district court.  The Petitioner (Genband US LLC and Genband Management Services Corp.) prevailed in their opposition to the Motion to Exclude, with the Board finding that claim interpretation documents should not be excluded simply because the claim construction standard is different. 

A link to the PTAB’s decision is provided here.

Board Finds Claims Directed to a Flight Recorder Unpatentable

In IPR2015, the Board recently issued a Final Written Decision in which all of the challenged claims were found to be unpatentable as obvious over the prior art.  The patent at issue, U.S. Patent No. RE39,618, is directed to a flight recorder system that monitors performance parameters and aircraft operational parameters, and broadcasts that information (along with other data) to a worldwide two-way RF network.  While the Petitioner (The Boeing Company) was unsuccessful in a number of arguments related to claim construction such as whether or not certain limitations should be construed as non-function descriptive material, the Petitioner was able to convince the Board that the claims were obvious.  This was accomplished by heavily leveraging a Declaration of one of their expert witnesses to support the express and inherent interpretation of the prior art.  In the decision, the Board essentially adopted all the Petitioner’s arguments for obviousness to find all challenged claims unpatentable over the prior art presented.     

A link to the PTAB’s decision is provided here.

Board Denies Review as Petitioner Relied on Prior Art Already Considered During Prosecution

In IPR2016-01571, the PTAB denied Petitioner’s request for inter partes review after finding the Petition relied on the same, or substantially the same, prior art and arguments previously presented to the Office.

In relevant part, 35 U.S.C. § 325(d) provides: “[i]n determining whether to institute . . . a proceeding . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” During prosecution of the patent at issue, the originally filed claims were rejected by the Examiner as anticipated by a reference on which the Petitioner relied upon as its basis for instituting review. Following the rejection, the Applicant (now Patent Owner) amended its application and added new claims. Subsequent to the amendment, in the Examiner Interview Summary, the Examiner indicated that the added claims overcame the earlier reference. Based on these facts, the Board concluded that the Petition relied on the same, or substantially the same, prior art and arguments and denied institution on those grounds.

A link to the PTAB’s decision is provided here.

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