Hewlett-Packard Company v. MCM Portfolio, LLC: Final Written Decision (FWD) IPR2013-00217
Thursday, August 14, 2014

Takeaway: Arguments that inter partes review proceedings violate the Seventh Amendment to the Constitution are unlikely to succeed.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7, 11, 19, and 21 of the ’549 patent are unpatentable. The ’549 patent “relates to controllers for flash-memory cards” and, particularly, “various improvements to flash-memory card readers, including by determining whether a particular flash-memory card includes a controller and, if not, performing operations to manage error correction for the flash-memory card.”

The Board first addressed Patent Owner’s argument “that inter partes review proceedings violate the Seventh Amendment.”  The Board noted that the Federal Circuit has previously rejected the same argument in the context of reexaminations, and that Patent Owner failed to “identify any constitutionally-significant distinction between reexamination proceedings and inter partes review proceedings.”  Thus, the Board concluded that IPR proceedings comply with the Seventh Amendment.

The Board then turned to claim construction, indicating that it would continue to apply the constructions set forth in the Decision on Institution.

Next, the Board addressed the ground of obviousness based on the combination of Kobayashi and Kikuchi, discussing Patent Owner’s arguments in turn. Patent Owner argued that the prior art does not disclose a particular claim limitation and that the Petition did not point out disclosure of that limitation in the prior art.  The Board did not find the arguments persuasive, in particular finding that the Petition sufficiently discussed the limitation in question.  The Board also quoted the transcript of the oral hearing, noting that “[Patent Owner] conceded at the oral hearing that it was not beyond the skill of one of ordinary skill at the time of the invention” to combine functions into a single chip as recited in the claims “and that, in fact, it is common practice to do so.”

The Board finally addressed Patent Owner’s argument that incorporating a feature of one reference into the other would not yield the claimed invention. The Board noted that the relevant inquiry relates to the “combined teachings of the references” rather than combining their specific structures.  However, Patent Owner did not argue that applying the combined teachings would have been “uniquely challenging or difficult for one of ordinary skill in the art.”

Thus, the Board concluded that Petitioner had established by a preponderance of the evidence that the challenged claims are unpatentable.

Hewlett-Packard Company v. MCM Portfolio, LLC, IPR2013-00217
Paper 31: Final Written Decision
Dated: August 6, 2014
Patent: 7,162,549
Before: Joni Y. Chang, Glenn J. Perry, and Jennifer S. Bisk
Written by: Bisk
Related Proceedings: Technology Properties Limited, LLC v. Hewlett-Packard Co., No. 6:12-cv-208 (E.D. Tex.); Technology Properties Limited, LLC v. Cannon, Inc. et al., No. 6:12-cv-202 (E.D. Tex.); International Trade Commission Investigation No. 337-TA-841; Reissue No. 12/351,691

 

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