Unified Patents, Inc. v. PersonalWeb Technologies, LLC and Level3 Communications, LLC, Case IPR2014-00702 (July 24, 2014) (Paper 13)

Takeaway: The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of prior third party IPR proceedings).

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Takeaway:

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of prior third party IPR proceedings). Continue reading “Unified Patents, Inc. v. PersonalWeb Technologies, LLC and Level3 Communications, LLC, Case IPR2014-00702 (July 24, 2014) (Paper 13)”

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)

Takeaway: The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue).

Click Here For Copy of Decision

Takeaway:

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of the original prosecution of the patent at issue). Continue reading “Prism Pharma Co., Ltd. v. Choongwae Pharma Corp., Case IPR2014-00315 (July 8, 2014) (Paper 14)”

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., Case IPR2014-00436 (June 19, 2014) (Paper 17)

Takeaway (1): The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of IPR proceedings to which the petitioner was a real-party-in-interest).
Takeaway (2): A petitioner asserting that a combination of prior art renders a claim obvious must explain the reason(s) why a person of ordinary skill in the art at the time of the invention would have modified one of the references to include the relevant aspects of the other(s). Simply pointing out that the references deal with similar features or devices is insufficient.

Click Here For Copy of Decision

Takeaway (1):

The Board has broad discretion to deny institution to the extent that an IPR petition presents the same or substantially the same prior art or arguments previously presented to the Office (such as in the context of IPR proceedings to which the petitioner was a real-party-in-interest).

Takeaway (2):

A petitioner asserting that a combination of prior art renders a claim obvious must explain the reason(s) why a person of ordinary skill in the art at the time of the invention would have modified one of the references to include the relevant aspects of the other(s). Simply pointing out that the references deal with similar features or devices is insufficient. Continue reading “Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., Case IPR2014-00436 (June 19, 2014) (Paper 17)”