Topic: Institution decisions

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IPR Petition denied for failure to prove up amusement park brochure as printed publication

In A.R.M. Inc. v. Cottingham Agencies LTD., the Patent Trail and Appeal Board (PTAB) declined to institute an Inter Partes Review (IPR) because each of the asserted rejections relied on a reference that was not adequately proven to be a printed publication. IPR2014-00671, Paper 10 (October 3, 2014).The PTAB is not amused: IPR Petition denied for failure to prove up document as printed publication

U.S. Pat. 7,666,103 is directed to an “Amusement Ride” which allows riders to simulate flying through the air and provides a “thrilling sensation.”  In its IPR Petition, the Petitioner relied on a device (the Barnstormer ride) that was sold and in use in the general public.  The Petitioner futher produced a … Continue Reading

Quality over quantity: PTAB exercises discretion to deny IPR petition for “administrative efficiency”

In Zetec v. Westinghouse, the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that presented “numerous grounds” of unpatentability and “underdeveloped arguments,” as attempting to evaluate such a petition “would place a significant burden on the Board and contravene the efficient administration of the Office.”  IPR2014-00384, Paper 10 (Jul. 23, 2014).

The Petition also placed a “significant and unfair burden on the Patent Owner to respond adequately.”

Although the Petitioner listed 68 specific grounds of unpatentability over 14 prior art references in the Petition, the PTAB found that there were actually 127 asserted grounds, based on … Continue Reading

No getting clever with page limits: PTAB denies IPR petition citing primarily to expert declaration

In Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that cited primarily to an expert declaration as failing to contain a “full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence” as required under 37 C.F.R. § 42.22(a)(2).  IPR2014-00491, Paper 9 (August 13, 2014).

The PTAB expressly declined to consider information presented in the supporting declaration, which was not directly discussed sufficiently in the Petition, because “doing so would permit the use of declarations to circumvent the page … Continue Reading