First CBM Claims Survive Review, First Contested Motions to Amend Granted-in-Part

December was a big month—and an interesting way to end 2014—at the PTAB. As our updated statistics show, claims have finally survived CBM review, and the Board has granted-in-part the first set of contested Motions to Amend. See Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPRs2013-00402, -00403, Paper 33 (Dec. 30, 2014).

First, in a set of five CBMs styled Groupon, Inc. v. Blue Calypso, LLC, the petitioner successfully challenged 52 claims, including one entire patent—but 24 claims in four patents survived review.

In those cases, the Board found the petitioner failed to prove that a printed publication used for many of the grounds to reject the claims—a technical report by a Dr. Olga Ratsimor—was a printed publication; they found it was not publicly accessible before the critical date. See, e.g., CBM2013-00033, Paper 51. Reasoning by analogy, the Board compared the purportedly internal technical report with theses placed in university libraries, and found that the lack of indexing or proof of public availability, among other things, doomed the petitioner’s use of the Ratsimor paper. Thus, the ground failed and the claims survived.

Second, the PTAB granted two more Motions to Amend on December 30, 2014. These related IPRs—the second and third Motions to Amend granted—mark the first grant of contested substitute claims. See Riverbed Tech., Inc. v. Silver Peak Sys., Inc., IPR2013-00402, -00403 Paper 35 (Dec. 30, 2014).

The petitioner proposed six substitute claims in each IPR. The Board granted two substitute claims in each—i.e., four out of twelve proposed substitute claims. (In contrast, they cancelled all 27 originally issued claims in one patent and all 12 originally issued claims in the other.)

The panel considered substitute claims in two related IPRs on two patents, granting some but denying others. One of the allowed substitute claims contained 332 words, compared to the original’s 37 words, according to a Microsoft Word word-count. See IPR2013-00402, Paper 35, at 8.

Special thanks to Daniel Klodowski, Elliot Cook, Joseph Schaffner, Kai Rajan, and Cara Lasswell for their help with statistics, support, and the project.