Takeaway:  A petitioner’s miscues in serving the petition may be deemed harmless by the Board where the patent owner could still timely file a response to the petition and suffers no prejudice.

In its Decision, the Board instituted inter partes review of the ‘077 patent as to claims 22, 27, 29, 31, 32, 39, and 40. “The ’077 patent discusses a control, monitoring, and/or security apparatus and method for vehicles or premises” that “allows an owner, occupant, or other authorized individual to control or to perform various monitoring and security tasks in regards to a premises from a remote location and at any time.”

The Board first addressed Patent Owner’s argument that the Petition must be denied as untimely. The one-year bar date was June 23, 2015. The petition was filed on June 23, 2015, but service was not affected until June 24, 2015 by Federal Express. Patent Owner further “argues that Petitioner’s electronic transmission of the Petition and supporting documents did not constitute proper service.” Because the statute “does not require that the documents be served on the Patent Owner, nor does it specify when the Patent Owner must receive these documents” the Board “decline[d] to deny this Petition for failure to meet the requirements of 35 U.S.C. § 312.” Further, even though the Board agreed that “mailing via FedEx the day after filing the Petition failed to comply with 37 C.F.R. § 42.105(a)” and “the purported email service, on this record, also does not appear to have been proper,” the error was “harmless.” And because “Patent Owner timely responded to the Petition . . . we see no prejudice to Patent Owner from Petitioner’s service miscues.” Thus, the Board “decline[d] to change the filing date accorded” and “decline[d] to deny the Petition for failure to meet the requirements of 35 U.S.C. § 315(b).”

The Board next addressed claim construction. The Board analyzed which claim construction standard to apply since “the patent will expire during the trial.” “Because, on this record, we conclude that the term of the ’077 patent will expire prior to the one-year period allotted for an inter partes review, for purposes of this Decision we presume that the patent has expired.” Thus, the Board determined it would apply the Phillips standard, like the district courts. The Board adopted express definitions of certain terms made in the prosecution of related patents “several years after the issuance of the ‘077 patent,” which the Board found “reasonable and instructive to understanding the proper scope of these claims terms.”

The Board next addressed the priority date of claim 27 of the ‘077 patent. “Petitioner asserts that claim 27 is not supported by the March 1999 application because it does not describe intelligent agents, software agents, or mobile agents.” The Board agreed, thus the 1997 Caglayan reference was found to be 102(b) prior art to claim 27.

The Board turned to the asserted grounds of unpatentability. The Board was persuaded, “based on the current record, that Petitioner has established a reasonable likelihood it would prevail in showing that [claims 22, 29, 31, 32, 39, and 40 are] unpatentable under 35 U.S.C § 102 over French.” Similarly, the Board determined “Petitioner has demonstrated a reasonable likelihood it would prevail in showing that claim 27 would have been obvious under 35 U.S.C. § 103 over the combined teachings of French and Caglayan.” Thus, inter partes review was instituted.

Terremark N. Am. LLC, et al. v. Joao Control & Monitoring Systems, LLC, CBM2015-01466
Paper 10: Decision Instituting Inter Partes Review
Dated: January 6, 2016
Patent: 6,542,077 B1
Before: Howard B. Blankenship, Stacey G. White, and Jason J. Chung
Written by: White
Related proceedings: The ʼ077 patent is at issue in ten lawsuits pending in courts around the country.