July 28,2017Newsletter

This Week at the Board - July 28, 2017

Federal Circuit Upholds Board’s Finding That Petitioner Failed To Prove Unpatentability Of Any Challenged Claim

In Securus Technologies, Inc. v. Global Tel*Link Corporation (Fed. Cir. 2016-2573), the Petitioner appealed a final written decision by the Board finding that the Petitioner had not met its burden of proving that any of the challenged claims were unpatentable. The Federal Circuit upheld the Board’s decision on all claims, finding that the Petitioner had failed to explain how or why a skilled artisan would combine the teachings of the prior art.

A link to the Federal Circuit Decision is provided here.

PTAB Dismisses Regents Of University Of Minnesota From IPR Based On Sovereign Immunity, But Allows IPR To Continue

In Reactive Services, Ltd., LLP v. Toyota Motor Corporation  (IPR2017-00572), the Board agreed that one of the patent owners, Regents of the University of Minnesota, was entitled to sovereign immunity, and that the Regents should therefore be dismissed as a party from the inter partes review. In the analysis the Board concluded that the Regents should be considered as an arm of the state of Minnesota, and thus entitled to sovereign immunity because Minnesota treats the Regents as an “an agency of the state” and federal courts have previously treated the Regents and the University itself as interchangeable. The Board noted, however, that the inter partes review should continue, in particular because Toyota could adequately represent the interests of the Regents (both patent owners holding an equal interest in the patent and being represented by identical counsel).  

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

PTAB Terminates IPR After Patent Owner Presents Evidence That Government Was In Privity With Defendant In A Lawsuit More Than One Year Prior To IPR

In Department of Justice v. Iris Corporation Berhad  (IPR2016-00497), the Board initially granted institution of an inter partes review. The Patent Owner, however, presented additional evidence during trial to support a motion for dismissal based on the one-year time bar. In particular, the Patent Owner brought forth evidence that more than one year prior to the petition for inter partes review, the Patent Owner had filed a complaint against Japan Airlines International Co., Ltd (“JAL”), and that the Petitioner and JAL were in privity at the time of the JAL litigation (e.g., evidence supported the fact that the government had “substantial” control over JAL’s participation in the litigation). For this reason, the Board found that the inter partes review was time-barred because the petition requesting the proceeding was filed more than one year after the date on which a privy of the petitioner was served with a complaint alleging infringement of the patent.   

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

PTAB Permits Patent Owner Opportunity To Supplement A Motion To Amend Upon Remand

In Veeam Software v. Veritas Technologies, LLC  (IPR2014-00090), the Board addressed an inter partes review decision on remand from the Federal Circuit, in which the Federal Circuit had affirmed the Board’s decision regarding invalidity, but had remanded the decision to deny the Patent Owner’s motion to amend. Upon remand, the Board allowed the Patent Owner to file a supplement to the motion to amend to modify one of the proposed claims to include the term “non-transitory” in the claim.  The Board noted that allowing the Patent Owner to add this term addressed any potential §101 and §112 issues, and that allowing such supplemental motions “serves the public interest.” After review, the Board granted the motion to amend with respect to modified claim, but denied with respect to another proposed claim.

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

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