Patent Owners Continue to Fare (Comparatively) Well 

Over the last month patent owners have continued to fare much better than they did during the first two years of AIA proceedings.  Patent owners prevailed on the merits for at least a portion of the claims in Apple Inc. v. WARF, IPR2014-01567 (obviousness argument rejected based on detailed consideration of motivation to combine); MasterImage 3D, Inc. v. RealD, Inc., IPR2015-00040; Perrigo Company v. Brigham and Women’s Hospital, IPR2014-01560, MasterImage 3D, Inc v. RealD Inc., IPR2015-00038;  Debasish Mukhopadhyay, IPR2014-01563; Aker Biomarine AS v. Neptune Tech, IPR2014-00003, GSI Technology, Inc., IPR2014-00121 (reference would require slight modification and thus was not a §102); Samsung Electronics Co., Ltd. v. Staightpath, IPR2014-01366; EMC Corporation v. Acquis, IPR2014-01452, Toshiba Corporation v. Optical Devices, IPR2014-01444; LG Display Co., Ltd. v. Acacia  IPR2014-01094 (“For anticipation, it is not enough that the prior art reference discloses multiple, distinct teachings that the ordinary artisan might somehow combine to achieve the claimed invention. . . .”); Samsung Electronics America, Inc. v. Smartflash LLC, CBM2014-00189, 190, 192, 196, 197, 198, 199, 200, 204; National Environmental Products Ltd., IPR2014-01502;  Hawaiian Telcom, Inc., CBM2014-00189;  Daicel Corporation v. Celanese Int’l , IPR2014-01515 and IPR2015-00170; Viglink v. Linkgine, CBM2014-00185; Bloomberg v. Quest, CBM2014-00205, 7,194,468 (“We agree with Patent Owner that this approach is conclusory and is contrary to the requirement that the claim as a whole must be considered, not individual elements.”); T-Mobile USA, Inc. v. Mobile Telecommunications Technologies, LLC, IPR2015-00017; Toshiba Samsung Storage Technology Korea Corporation, IPR2014-00205;   RF Controls, LLC v. A-1 Packing Solutions, IPR2014-01536; International Business Machines Corporation v. Intellectual Ventures, IPR2014-01516 and IPR2014-00180. 

Significantly, secondary indicia carried the day in Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Limited , IPR2014-00309. (“[W]e are persuaded that our finding of commercial success is particularly strong, as [the patent owner's] patented invention has not only achieved significant sales in its relevant market, it rapidly ascended to the dominant position in the relevant market, eclipsing not only other tolerance rings, but all other competing technologies as well. . . . [W]e determine that commercial success alone sufficiently outweighs the other three factors, and that our finding of copying merely strengthens further our finding that secondary considerations weigh in favor of [the patent owner].")

RPI and Privity Concepts Expand But Board Prefers That They Be Raised Early

In G.E. v. Transdata, IPR2014-01559 the Board found that privity with a previously-sued party barred the petitioner where the agreement provided that while Petitioner would “OG&E timely informed of all material activity in the case and will solicit OG&E’s input and assent on all material decisions in the case.”  However, the Board is becoming less tolerant to privity and RPI issues raised after the Preliminary Response. Askeladden LLC v. iSourceLoans, IPR2015-00129. 

Petitions Are Being Held to Strict Standards

The Board denied institution in Apple v. SmartFlash, CBM2015-00015 due to failure to identify differences between the primary reference and the prior art.  The Board continues to ignore evidence not cited in the petition itself (as opposed to the declaration).  Tempur Sealy International, Inc. v. Select Comfort, IPR2014-01419; ZTE, Inc. v. ETRI, IPR2015-00028.  

Issue Joinder Debate Continues

The PTAB could not muster enough votes to designate the decision in Targetprecedential. So, some panels have continued to find that issue joinder is not permitted by the statute.  SkyHawke Tech. v. L&H Concepts, IPR2014-01485. 

Follow-on Petitions Held to “Could Have Raised” Estoppel Standard

The Board is exercising its discretion to reject follow-on petitions which are filed prior to the one year statutory bar, at least where the art could have been located with reasonable diligence. Conopcco v. P&G, IPR2014-00628 (“Unilever does not show that we erred in selecting the result that removes an incentive for petitioners to hold back prior art for successive attacks, and protects patent owners from multifarious attacks on the same patent claims”); Dell, Inc. v. ETRI, IPR2015-00549 (“What a Petitioner ‘could have raised’ was described broadly in the legislative history of the America Invents Act (‘AIA’) to include ‘prior art which a skilled searcher conducting a diligent search would reasonably could have been expected to discover.’ 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley).”)