June 13, 2016Newsletter

This Week at the Board - June 13, 2016

PTAB Terminates Ex Parte Reexamination
In IPR2013-00276 and IPR2013-00277, the PTAB ordered termination of an ex parte reexamination proceeding of the patent that had been the subject of the IPR proceedings.  The PTAB had entered final written decisions in both IPR proceedings finding that Petitioner had failed to show that the challenged claims were unpatentable.Petitioner appealed to the Federal Circuit.The Federal Circuit vacated the PTAB’s final written decisions and remanded for a clarification of the PTAB’s treatment of an exhibit in the final written decisions. Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1366–67 (Fed. Cir. 2015). While the IPR proceedings were pending on remand, Petitioner requested ex parte reexamination of the same patent. Patent Owner moved to terminate the ex parte reexamination under 35 U.S.C. §§ 315(d) and 3225(d). The PTAB granted the motion finding that it would be unfair to Patent Owner to maintain the ex parte proceeding because Petitioner had the benefit of the PTAB’s final written decisions, as well as the guidance provided by the Federal Circuit on appeal, in formulating its request for ex parte reexamination.

PTAB Grants Motion for Additional Discovery and Authorizes Sur-Reply
In IPR2015-01242 and related IPR proceedings, the PTAB granted a motion for additional discovery concerning 12 documents that had been produced in a related litigation. In its response, Patent Owner had asserted that the inventors had conceived and reduced to practice the invention before the effective filing date of a reference relied upon in the petition. Petitioner argued that the 12 documents showed that the subject matter of the challenged claims was conceived and reduced to practice by persons other than the named inventors. The PTAB analyzed the motion for additional discovery under the Garmin factors. The PTAB concluded that each of the Garmin factors favored granting the motion and that it would be in the interests of justice to grant the motion. The PTAB ordered the Patent Owner to produce the 12 documents and authorized Patent Owner to file a sur-reply limited to responding to arguments and evidence presented in Petitioner’s reply that directly relate to conception and reduction to practice of the inventions-at-issue.

PTAB Orders that Neither Party Is Permitted to Use a Demonstrative Exhibit at the Oral Hearing
In IPR2015-00849 and IPR2015-00851, the PTAB ordered that neither party was permitted to use a demonstrative exhibit at the oral hearing. Petitioner had previously informed Patent Owner that it would not be submitting a demonstrative exhibit for the oral hearing. Several days later, Patent Owner served its demonstrative exhibit on Petitioner. The service of the demonstrative exhibit was after the deadline to serve demonstrative exhibits. The PTAB determined that Patent Owner’s service of the demonstrative exhibit was untimely.  Therefore, the PTAB precluded Patent Owner from using the demonstrative exhibit at the oral hearing. Since Petitioner had already decided not to use a demonstrative exhibit at the oral hearing, the PTAB ordered that neither party was permitted to use a demonstrative exhibit at the oral hearing and expunged from the record the demonstrative exhibit that had been filed by Patent Owner.

The PTAB has recently ordered multiple sua sponte stays of Ex Parte Reexamination proceedings for three patents owned by Joao Control & Monitoring Systems, LLC in view of multiple IPR proceedings for each patent that have been instituted based on prior art and claim construction arguments that were similar to those seen in Reexamination proceedings. The Board exercised its exclusive jurisdiction over a patent involved in a proceeding before the Board granted under 37 C.F.R. §§ 42.3(a) to stay the Reexamination proceedings involving the same patents pending termination or completion of the IPR proceedings. In staying the Reexaminations, the Board noted the significant overlap between the related proceedings render the stays practical because duplicative efforts will be reduced and the potential for inconsistent results is mitigated.

PTAB Denies CBM Review Based on Enfish Decision
In CBM-2016-00019, the PTAB relied on the recent Enfish Federal Circuit decision in denying institution of a CBM review. The claims at issue were directed to the use of streams and substreams within computer software. The petitioner tried to convince the PTAB that the claims were directed to an abstract idea, and were more likely than not to fail the Alice test for patent eligibility under 35 U.S.C. §101. However, the PTAB was more persuaded by the patent owner’s arguments that the claims were directed to “an improvement to computer functionality,” similar to the claims in Enfish, and thus not an abstract idea. In particular, the PTAB noted that “the specification demonstrates that the ΚΌ227 patent addresses a problem that ‘arose specifically in the realm of computer operating systems.’” 

PTAB Finds Claims Unpatentable, Despite Enfish Decision
In CBM-2015-00021, the PTAB found the challenged claims of a patent to be unpatentable, despite the recent Enfish Federal Circuit decision. The PTAB found that the claims at issue were directed to the abstract idea of determining whether access to data should be granted based on whether one or more rules are satisfied. The PTAB noted that “the databases and access rules recited in claims 1 and 8 perform their normal functions and achieve expected results” and that “storing the rules in a separate database does not change the expected operation of the rules or the database, merely the location of those rules.” Thus, the PTAB found that these claims did not amount to “an improvement to computer functionality” as in Enfish.

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