Key Decisions

Supreme Court:

1) Cuozzo v. Lee

Federal Circuit:

1) In re Cuozzo Speed Technologies – Affirming the Broadest Reasonable Interpretation claim construction standard.

2) Belden Inc. v. Berk-Tek LLC – Non-precedential decision; and

3) Microsoft Corp. v. Proxyconn, Inc. – First reversal of a PTAB decision, generally because the Board’s claim construction rulings were not reasonable because they did not follow general claim construction principles.

4) SoftView LLC v. Kyocera Corp. – Rule 36 Judgment

5) Clearlamp, LLC v. LKQ Corp. – Rule 36 Judgment

6) Board of Trustees v. Micron Technology, Inc. – Rule 36 Judgment

7) In re: Zillow, Inc. – Rule 36 Judgment

8) Helferich Patent Licensing v. CBS Interactive – Rule 36 Judgment

9) Luv N’Care Ltd. v. Munchkin, Inc. – Rule 36 Judgment

10) Emcore Corp. v. Nichia Corp. – Rule 36 Judgment

11) Mobile Scanning Technologies v. Motorola Solutions, Inc. – Rule 36 Judgment

12) In re Continental Automotive Systems – Rule 36 Judgment

13) Prolitec, Inc. v. Scentair Technologies, Inc. – Rule 36 Judgment

14) Neste Oil Oyj v. Reg Synthetic Fuels, LLC – Rule 36 Judgment

15) Bernina Int’l v. Handi Quilter – Rule 36 Judgment

16) Personal Web Technologies, LLC v. EMC Corporation – Rule 36 Judgment

17) Avaya Inc. v. Network-1 Technologies, Inc. – Rule 36 Judgment

18) Dell Inc. v. Network-1 Security Solutions- Rule 36 Judgment

19) Sony Corporation of America v. Network-1 Security Solutions – Rule 36 Judgment

20) Hewlett Packard Co. v. Network-1 Security Solutions – Rule 36 Judgment

21) ConvaTec Technologies Inc. v. Smith & Nephew, Inc.- Rule 36 Judgment

22) In re: Schott Gemtron Corporation – Rule 36 Judgment

23) Schott Gemtron Corporation v. SSW Holding Company, Inc.- Rule 36 Judgment

24) Neste Oil Oyj v. REG Synthetic Fules, LLC – Rule 36 Judgment

25) Corning Incorporated v. DSM IP Assets B.V. – Rule 36 Judgment

26) In re: Rotatable Technologies, LLC – Rule 36 Judgment

27) Dynamic Drinkware, LLC v. National Graphics, Inc. – Federal Circuit Decision affirming denial of petition

28) Achates Reference Publishing v. Apple Inc. – Federal Circuit Decision that it is prohibited, pursuant to 35 U.S.C. § 314(d), from reviewing the Board’s determination to initiate IPR proceedings based on the Board’s assessment of the time-bar of 35 U.S.C. § 315(b)

29) Belden Inc. v. Berk-Tek LLC – Federal Circuit affirms Board’s finding that four claims were determined to be patentable and reverses Board’s determination that two claims were not shown to be patentable. Court focuses on the fact that the invention was a simple device and the references themselves provide a rationale to combine. Further, Patent Owner not procedurally harmed by virtue of the fact that Petition contained no expert testimony, but reply testimony was provided.

30) AIP Acquisition LLC v. Level 3 Communications, LLC – Rule 36 Judgment

31) In re: Encap, LLC – Rule 36 Judgement

32) Ariosa Diagnostics v. Verinata Health, Inc. – Vacating and remanding decision upholding the validity of challenged patent claims because the Board’s opinion was ambiguous as to whether or not it had appropriately considered a prior art brochure.

33) Click-to-Call Tech., LP v. Oracle Corp., – Dismissing appeal in view of Achates Reference v. Apple (non-precedential).

34) Straight Path IP Group, Inc. v. Sipnet EU S.R.O. – Reversing Board’s cancellation of challenged claims on claim construction analysis, including that claims had a plain meaning that should not have been altered by resort to the specification

35) MCM Portfolio LLC v. Hewlett-Packard Co. – Federal Circuit confirms the constitutionality of IPR process and that IPR does not violate the right to a jury trial provided by the 7th Amendment

36) Prolitec, Inc. v. ScentAir Techs., Inc. – Court affirms Board decision that claims were unpatentable (affirming claim construction and anticipation findings) and that motion to amend fell short (affirming Board’s approach relative to the scope of “prior art of record” that must be distinguished). Judge Newman files broad-based and strong dissenting opinion.

37) Merck & Cie v. Gnosis S.p.A., (Gnosis I) – upholding unpatentability determination. Notable for Judge Newman’s dissent regarding the appropriate standard of review.

38) S. Ala. Medical Science Found. v. Gnosis S.p.A. (Gnosis II) – upholding unpatentability determination. Notable for Judge Newman’s dissent regarding the appropriate standard of review.

39) Cutsforth, Inc. v. MotivePower, Inc. – Rule 36 Judgment

40) Stephenson v. Game Show Network, LLC – Rule 36 Judgment

41) TruePosition Inc. v. Polaris Wireless, Inc. – Rule 36 Judgment

42) Yissum Research Dev. Co. v. Sony Corp. – Rule 36 Judgment

43) Redline Detection, LLC v. Star Envirotech, Inc. – Petitioner cannot add information required to sustain its burden in an IPR (such as an expert declaration) as supplementary evidence after the decision to institute

44) In re Clouding Corp. – Rule 36 Judgment

45) Ethicon Endo-Surgery, Inc. v. Covidien LP – Neither the AIA, nor the Constitution, precludes the same 3-judge panel from the PTAB that made the decision to institute from rendering the Final Written Decision.

46) Pentair Water Pool and Spa v. Hayward Indus., Inc. – Rule 36 Judgment

47) Pentair Water Pool and Spa v. Hayward Indus., Inc. – Rule 36 Judgment

48) Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc. – Affirming obviousness determination from PTAB in DNA sequencing patent.

49) Cutsforth, Inc. v. MotivePower, Inc. – PTAB decision of obviousness vacated and remanded because PTAB decision did not adequately explain its reasoning for determining that the claims were obvious.

50) Lifescan Scotland, Ltd. v. Pharmatech Solutions, Inc. – Rule 36 Judgment

51) Synopsis v. Mentor Graphics – holding that the PTAB need not address all claims challenged in a Petition when rendering its Final Written Decision; only those claims included in the trial need be addressed

52) Nike v. Adidas – Remand to PTAB to consider motion to amend in view of defective PTAB obviousness analysis.

53) In re Gevo, Inc. – Rule 36 Judgment

54) Phison Elec. Corp v. Silicon Motion Tech. – Rule 36 Judgment

55) Lely Patent N.V. v. Delaval Int’l AB – Rule 36 Judgment

56) Interface, Inc. v. Tandus Centiva, Inc. – Rule 36 Judgment

57) IBM v. Intellectual Ventures II LLC – Rule 36 Judgment

58) Board of Trustees v. Ariosa Diagnostics, Inc. – Rule 36 Judgment

59) TriVascular, Inc. v. Samuels – Affirmance of PTAB’s claim construction that led to the patentability of the claims, with particular focus on failed argument by Petitioner regarding prosecution history disclaimer

60) PPC Broadband, Inc. v. Corning Optical Comm. – Reversal where Board’s claim construction comprised the broadest of several dictionary definitions without regard to the context provided by the claims, specification and patented technology; broadest reasonable interpretation is not the one that covers the most embodiments, but is the most reasonable in light of the claims and specification

61) Harmonic, Inc. v. Avid Tech. – Court reiterated that it does not have jurisdiction to review the PTAB’s institution decisions

62) PPC Broadband, Inc. v. Corning Comm. – providing guidance on objective indications of non-obviousness; where undisputed evidence is presented that commercially-successful product is covered by the patents, it is error to not give weight to that evidence without further explanation (also noting that this presumption will only apply in inter partes context, where petitioner has the means to refute Patent Owner’s evidence)

63) Int’l Controls v. Honeywell Int’l, Inc. – Rule 36 Judgment

64) Dell Inc. v. Acceleron, LLC – reversing the Board’s decision that a challenged claim was unpatentable because the determination that such claim was unpatentable was based on a new argument, first presented by Petitioner at the oral argument; Patent Owner was, as a result, denied its procedural right to have notice and the ability to respond to a ground of cancellation

65) Shaw Industries Grp., Inc. v. Automated Creel Sys., Inc. – finding that it did not have subject matter jurisdiction to review the propriety of the Board’s practice of denying grounds as redundant and confirms its lack of subject matter to review the Board’s interpretation of the 315(b) time bar; concurring opinion by Judge Reyna criticizing Board for its use of redundancy

66) Grandeye Ltd. v. Google, Inc. – Rule 36 Judgment

67) EveryMD LLC v. Facebook, Inc. – Rule 36 Judgment

68) Int’l Securities Exch. v. Chicago Board Options Exch. – Rule 36 Judgment

69) Purdue Pharma L.P. v. Dopomed, Inc.

70) In re: Hagenbuch

71) Fellowes, Inc. v. Acco Brands Corp. – Rule 36 Judgment

72) Pride Mobility Products Corp. v. Permobil, Inc. – reversing the PTAB’s decision relative to one canceled claim, finding that the “Board’s sole basis for its claim construction does not reasonably support a departure from what the claim language and specification so clearly mean.” Affirming Board’s decision that the other challenged claims in two IPR proceedings was supported by substantial evidence.

73) HP Inc. v. MPHJ Tech. Invs. – affirming PTAB decision relative to the patentability of one challenged claim as not anticipated in view of Petition’s failure to identify all limitations of that claim (as confirmed by attorney admission at oral argument); also affirming the PTAB’s decision not to consider all grounds of the petition based on redundancy grounds, finding that such decision is not reviewable pursuant to 35 USC §314(d)

74) In re Rivera – Rule 36 Judgment

75) Osram GMBH v. Schubert – Rule 36 Judgment

76) Cooper v. Square, Inc. – Rule 36 Judgment

77) Cutsforth, Inc. v. MotivePower, Inc.

78) Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. – CAFC affirms Board’s decision to ignore petitioner reply where that reply contained new argument in support of unpatentability

79) Norred v. Medtronic, Inc. – Rule 36 Judgment

80) Motion Games, LLC v. Nintendo of America Inc. – Rule 36 Judgment

81) Surfcast, inc. v. Microsoft Corp. – Rule 36 Judgment

82) Endotach LLC v. Medtronic, Inc. – Rule 36 Judgment

83) Icon Health & Fitness, Inc. v. Johnson Health Tech Co. – Rule 36 Judgment

84) Oil States Energy Services v. Greene’s Energy Group – Rule 36 Judgment

85) Reloaded Games, Inc. v. Parallel Networks, LLC – Rule 36 Judgment

86) In re: Aqua Products, Inc.

87) Clouding Corp. v. Unified Patents, Inc. – Rule 36 Judgment

88) Black & Decker, Inc. v. Positec USA, Inc.

89) Software Rights Archive, LLC v. Facebook, Inc. – Rule 36 Judgment

90) Medtronic, Inc. v. Lifeport Sciences LLC – Rule 36 Judgment

91) Perfect Surgical Techniques v. Olympus America, Inc. – Rule 36 Judgment

92) Genzyme Therapeutic Products v. Biomarin Pharmaceutical – PTAB is not constrained to consider only information cited in the institution decision; IPRs are considered trials and it is expected that additional evidence will come to light during the course of a trial

93) GrafTech Int’l Holdings v. Laird Technologies, Inc.

94) LG Electronics, Inc. v. Toshiba Samsung Storage – Rule 36 Judgment

95) SAS Institute, Inc. v. Complementsoft, LLC 

96) Robert Bosch Healthcare System v. Cardiocom, LLC – Rule 36 Judgment

97) Arendi S.A.R.L. v. Apple, Inc. – Rule 36 Judgment

98) Respironics, Inc. v. Zoll Medical Corp.

99) In re: Magnum Oil Tools International – Reversing PTAB, finding that the Court is not prohibited  by § 314(d) from reviewing those decisions just because they were also addressed in the Decision to Institute; the Court also held that the Board’s obviousness conclusion was not based on sufficient evidence since the Board relied on Petitioner’s conclusory statements and improperly argued on behalf of Petitioner; lastly, the plain language of 35 USC § 141(c) does not require a party dissatisfied with the Board’s final written decision to first raise the issue in a rehearing request before appealing the issue to the court

100) Apotex v. Wyeth

101) Clearplay, Inc. v. Customplay, LLC – Rule 36 Judgment

102) Intellectual Ventures I LLC v. Ericsson Inc. – Rule 36 Judgment

103) B.E. Tech, LLC v. Sony Mobile Comm.

104) In re Aqua Products, Inc. – Granting en banc review of motion to amend practice at the PTAB

105) RB Pharma. Ltd. v. Biodelivery Sciences – Rule 36 Judgment

106) Arendi S.A.R.L. v. Apple, Inc.– PTAB reversed because “common sense” was improperly used to supply a missing limitation in an obviousness inquiry

107) Netapp, Inc. v. Electronics and Telecom. – Rule 36 Judgment

108) In re: Warsaw Orthopedic, Inc. – With a discussion of the “substantial evidence” standard, PTAB affirmed because substantial evidence supported finding of obviousness; one claim survived, with a remand to the PTAB, for more explanation as to why the PTAB reached its conclusion

109) Enplas Corp. v. Seoul Semiconductor Co., Ltd. – Rule 36 Judgment

110) In re: The Procter & Gamble Co. – Rule 36 Judgment

111) Veritas Technologies LLC v. Veeam Software Corp. – PTAB’s denial of motion to amend claims vacated.  The PTAB acted in an arbitrary and capricious manner when it insisted the patent owner discuss whether each newly added feature in the claims was separately known in the prior art, rather than discussing the newly added features in combination with other known features.

112) Wi-Fi One, LLC v. Broadcom Corp. – Rule 36 Judgment

113) Wi-Fi One, LLC v. Broadcom Corp. – Rule 36 Judgment

114) Wi-Fi One, LLC v. Broadcom Corp. – The Federal Circuit refuses to consider patentee’s argument that the petition was time-barred because the petitioner was in privity with a time-barred litigant.  The Court found Cuozzo does not overrule the Achates ruling that the Federal Circuit cannot review whether review was improperly instituted based on a time-barred petition.

115) Software Rights Archive, LLC v. Facebook, Inc. – Per curiam; nonprecedential.  The Court affirmed the PTAB’s unpatentability finding for most claims, rejecting patentee’s teaching away argument and finding lack of nexus between the claims and alleged commercial success.  Reversing rejection of other claims where the PTAB’s analysis failed to show the claims’ elements were all in the prior art.

116) Mexichem Amanco Holding v. Honeywell Int’l Inc. – Rule 36 Judgment

117) Synopsis, Inc. v. Mentor Graphics Corp. – Rule 36 Judgment

118) Brixham Solutions, Ltd. v. Juniper Networks, Inc. (IPR2014-00425) – Rule 36 Judgment

119) Brixham Solutions, Ltd. v. Juniper Networks, Inc. (IPR2014-00431) – Rule 36 Judgment

120) Husky Injection Molding System v. Athena Automation Ltd. – Assignor estoppel does not apply to PTAB proceedings

121) Medtronic, Inc. v. Robert Bosch Healthcare – The Court reaffirmed that the PTAB’s vacatur of its institution decisions and termination of the proceedings (due to failure to name all real parties in interest) constituted decisions whether to institute and are therefore final and nonappealable under § 314(d).  The Court found Cuozzo does not require a contrary holding.

122) Affinity Labs of Texas, LLC v. Samsung Electronics Co. – Rule 36 Judgment

123) CF Crespe LLC v. Silicon Laboratories, Inc. – Rule 36 Judgment

124) Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc. – Rule 36 Judgment

125) REG Synthetic Fuels, LLC v. Neste Oil Oyj – Reversing PTAB’s decision to exclude certain evidence relating to conception and reduction to practice; not hearsay because only offered for the non-hearsay purpose of showing that the inventor thought he had achieved a quality claimed in the patent-at-issue

126) Hockeyline, Inc. v. Stats, LLC – Rule 36 Judgment

127) B.E. Technology, LLC v. Google, Inc.

128) Unwired Planet, LLC v. Google, Inc.

129) Perfect Surgical Techniques v. Olympus Am., Inc.

130) Bose Corp. v. SDI Tech., Inc. – Rule 36 Judgment

131) Schoeller-Bleckmann Oilfield v. Churchill Drilling Tools US

132) In re: Nuvasive, Inc.

133) CF Crespe LLC v. Silicon Laboratories, Inc. – Rule 36 Judgment

134) Securus Technologies, Inc. v. Global Tel Link Corp – Rule 36 Judgment

135) CSP Tech, Inc. v. Clariant Corp. – Rule 36 Judgment

136) In re: Nuvasive, Inc.

137) Microsoft Corp. v. Enfish, LLC

138) Micrografx, LLC v. Google Inc.

139) Micrgrafx, LLC v. Google Inc. 

140) D’Agostino v. Mastercard Int’l – PTAB reversed for adopting unreasonable claim construction

141) CTP Innovations, LLC v. Eastman Kodak Co. – Rule 36 Judgment

142) Lear Corp. v. NHK Seating of Am., Inc. – Rule 36 Judgment

143) Wildcat Licensing WI, LLC v. Adient PLC – Rule 36 Judgment

144) In re Celgard, LLC – Rule 36 Judgment

145) UUSI, LLC v. Webasto Roof Systems, Inc. – Rule 36 Judgment

146) Intellectual Ventures II LLC v. Compass Bank – Rule 36 Judgment

147) Intellectual Ventures I LLC v. Motorola Mobility LLC – Rule 36 Judgment

148) VernetX v. Apple Inc.

149) VernetX v. Apple Inc.

150) Wi-Fi one, LLC v. Broadcom Corp. – Ordering rehearing en banc of Achates decision regarding whether judicial review is available for issues raised in Decisions to Institute

151) Zond LLC v. Gillette Co – Rule 36 Judgment

152) Zond LLC v. Advanced Micro Devices, Inc. – Rule 36 Judgment

153) Zond LLC v. Advanced Micro Devices, Inc. – Rule 36 Judgment

154) Utility Associates, Inc. v. Digital Ally, Inc. – Rule 36 Judgment

155) Leak Sruveys, Inc. v. Flir Systems, Inc. – Rule 36 Judgment

156) Phigenix, Inc. v. Immunogen, Inc.

157) In re: Depomed, Inc.

158) Secure Axcess, LLC v. EMC Corp. – Rule 36 Judgment

159) Slot Speaker Technologies v. Apple, Inc.

160) Personal Web Technologies, LLC v. Apple, Inc. 

161) MPHJ Technology Investments v. Ricoh Americas Corp.

162) Qualtrics LLC v. OpinionLab, Inc.

163) LMK Technologies, LLC v. BLD Services, LLC – Rule 36 Judgment

164) GreatBatch Ltd. v. AVX Corp. – Rule 36 Judgment

165) Nidec Motor Corp. v. Zhongshan Broad Ocean Motor.

166) Tietex Int’l Ltd. v. Precision Fabrics Group, Inc. – Rule 36 Judgment

167) Hyundai Mobis Co., Ltd. v. Autoliv ASP, Inc. – Rule 36 Judgment

168) Power Survey, LLC v. L-3 Comm. Holdings – Rule 36 Judgment

169) Paice LLC v. Ford Motor Co.

170) Paice LLC v. Ford Motor Co.

171) Meiresonne v. Google, Inc.

172) Eli Lilly and Co. v. Los Angeles Biomedical

173) Los Angeles Biomedical v. Eli Lilly and Co.

174) Google v. SimpleAir, Inc. – claim construction argument on appeal deemed waived because the argument was not first made to the PTAB

175) Intellectual Ventures II LLC v. Commerce Bancshares, Inc.

176) Enova Tech. Corp. v. Seagate Tech. – Rule 36 Judgment

177) Motorola Mobility LLC v. Intellectual Ventures I LLC – Rule 36 Judgment

178) Affinitiy Labs of Texas, LLC v. Samsung Electronics Co., Ltd. – Rule 36 Judgment

PTAB:

Precedential Decisions:

LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (Sept. 17, 2015). Provides guidance regarding the the “served with a complaint” requirement of 35 U.S.C. § 315(b). One year bar for filing an IPR may be triggered if earlier of two complaints was dismissed partially with prejudice and partially without.

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (May 14, 2015). Provides guidance regarding CBM estoppel provisions of 35 U.S.C. § 325(e)(1). Estoppel is applied on a claim-by-claim basis – petition for CBM is not necessarily barred if it addresses different claims than those that were the subject of a prior final written decision.

SecureBuy LLC v. CardinalCommerce Corp., CBM 2014-00035, Paper 12 (Apr. 25, 2014). Provides guidance on the scope of 35 U.S.C. § 325(a)(1), including what is meant by a petitioner (or its real party in interest) previously “filed a civil action challenging the validity of a claim in the patent.”

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings.

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) – This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015) – This order provides guidance on patent owner’s burden to show entitlement to substitute claims. 

Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016) – This decision interprets 35 U.S.C. § 312(a)(2).

Additional Discovery

IPR2012-00001; Paper 20

IPR2013-00080; Paper 18

IPR2013-00601; Paper 23

IPR2015-00635, Paper 10 (privity issue)

Motions to Amend

IPR2012-00027; Paper 26 (procedural and substantive requirements for meeting burden for filing motion to amend)

IPR2012-00005; Paper 27 (burden of identifying written descriptive support for proposed substitute claims)

IPR2013-00136, Paper 32 (burden of patentably distinguishing over prior art)

IPR2013-00423, Paper 27 (detailed recitation of requirements)

IPR2014-00441, Paper 19 (requirements)

IPR2015-00040, Paper 42 (requirements)

Taking of Deposition Using an Interpreter

IPR2012-00022; Paper 55 and Paper 67

Non-Electronic Filing of Video Files

IRP2013-00258; Paper 8

Joinder

IPR2013-00004; Paper 15

Redundancy of Grounds

CBM2012-00003 (explaining vertical and horizontal redundancy and what is required to avoid denial of redundant grounds)

Demonstrative Exhibits

IPR2013-00033, Paper 118

IPR2013-00041, Paper 65

Pro Hac Vice Motions

IPR2013-00010, Paper 8

Motion to Terminate

CBM2013-00015, Paper 9

Motion to Seal

IPR2012-00001, Paper 34 and Paper 36

Motion for Observation

IPR2013-00033, Paper 101

Incorporation by Reference

IPR2014-00454, Paper 12

Service of a Complaint

IPR2014-00293, Paper 18

Request for Expanded Panel on Rehearing

IPR2014-00506, Paper 25

Estoppel

IPR2015-00549, Paper 10 (§ 315(e)(1))

CBM2014-00176, Paper 28 (§ 325(e)(1))

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