Denying Motion to Dismiss IPR2013-00206, 00208

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Takeaway: Many decisions on what evidence the Board will consider will be provided when preparing its final written decision. Thus, a party should be careful to ensure all evidence is provided properly, because there will likely be no opportunity to fix any errors.

In its Order, the Board denied Patent Owner’s motion to dismiss without prejudice the Petitioner’s replies in both proceedings. Patent Owner argued that the replies should be dismissed for the following reasons: (1) improper incorporation by reference under 37 C.F.R. § 42.6(1)(3); (2) exceeding the scope of the reply under 37 C.F.R. § 42.23(b); and (3) exceeding the scope of prior art available in an IPR under 35 U.S.C. § 311. Continue reading

Denying Motion to File Supplemental Information CBM2013-00052, 53, 54

Takeaway: The Board considers whether additional information would lead to a just, speedy, and inexpensive proceeding when deciding a motion to submit supplemental information.

In its Order, the Board denied a request by the Petitioner to file a motion to submit supplemental information pursuant to 37 C.F.R. § 42.223(c). In particular, the Petitioner sought to submit challenges to dependent claims of U.S. Patent Nos. 7,958,024 in CBM2013-00053 and 7,908,304 in CBM2013-00054, which were not involved in either case. The Board held that allowing the additional challenges would not lead to a just, speedy, and inexpensive proceeding because it would require briefing by all parties as well as additional cross-examination of witnesses. Continue reading

Denying Stipulated Motion to Stay CBM2013-00049-51

Takeaway: The Board is not likely to stay other PTAB proceedings challenging the same patent to have all proceedings on the same schedule, particularly when the proceedings raise different unpatentability grounds and not every proceeding has been instituted.

In its Order, the Board denied the parties’ joint motion to stay the CBM proceeding. After filing the petitions in the CBM review proceedings, Petitioners filed petitions for inter partes review of the same three challenged patents (IPR2014-00097, IPR2014-00098, and IPR2014-00099). The parties requested a stay in the CBM proceedings until a determination is made whether to institute a trial in the IPR proceedings, stating that it would be more efficient to have all six proceedings on the same schedule allowing for single depositions and a single trial if the IPR proceedings are instituted. The Board denied the request stating that the CBM proceedings only involve patent eligibility under 35 U.S.C. § 101 while the IPR proceedings involve patentability over certain prior art under 35 U.S.C. §§ 102 and 103. Further, the Board has not yet determined whether it will institute the IPR reviews and if it does not, then it would be a waste of time to stay the CBM proceedings. Finally, the proposed schedule by the parties did not allow for the Board to issue its final written decision within one year of institution of the CBM proceeding. Therefore, the Board did not see a compelling need to stay the CBM proceedings at this time. Continue reading

Denying Motion to Exceed Page Limits and other Procedural Aspects IPR2013-00312

Takeaway: Petitioners need not focus on issues in their Reply that have already been decided in the proceeding, and responses to a patent owner’s statement of material facts in dispute could be presented as an appendix to the Reply and not be counted against the 15 page limit.

In its Order, the Board clarified procedural rules and denied Petitioners’ request for three additional pages in their Reply to the Patent Owner Response. First, in response to Petitioners’ question regarding how to respond to Patent Owner’s “Statement of Material Facts in Dispute,” the Board directed Petitioners to 37 C.F.R. § 42.24(c) indicating that Petitioners should include a short response that admits, denies, or otherwise indicates they cannot admit or deny, but it can be included as an appendix to the Reply and not be part of the fifteen page limit. However, if Petitioners wish to include an additional statement of facts, that must be included in the fifteen page limit. The Board then addressed Petitioners’ inquiry regarding submission of additional excerpts of a book into the record where Patent Owner had filed only certain portions of the book. The Board stated that Petitioner may submit additional excerpts of the book as long as they are within the scope of proper rebuttal. Finally, the Board denied Petitioners’ request for three additional pages for their Reply, stating that the request did not present extraordinary circumstances justifying the additional pages because there are only three grounds of unpatentability based on two references, and Petitioners do not need to address issues in their Reply that have already been decided in the proceeding. Continue reading

Granting Authorization to File Motion to Strike Portions of Petitioner’s Reply IPR2013-00242

Takeaway: Relying upon a different embodiment in a reply brief than was relied upon in the petition is not a permissible use of a reply brief.

In its Order, the Board authorized Patent Owner to file a motion to strike portions of Petitioner’s reply. The Patent Owner argued that Petitioner’s reply contained improper new arguments regarding one of the prior art references at issue in the proceeding. In particular, the Patent Owner argued that, in the reply, Petitioner relied on a different embodiment in the same prior art reference than was relied on in the Petition. The Patent Owner further urged that relying on a different embodiment in the same prior art reference is new evidence, and not properly responsive to arguments raised in the patent owner response. See 37 C.F.R. § 42.23(b) (a reply “may only respond to arguments raised in the corresponding . . . patent owner response”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant‟s motion.”). Continue reading

Final Written Decision IPR2013-00034

Takeaway: Patent Owner is not permitted to disavow claim scope within the proceeding itself – referred to by the Board as “same proceeding disavowal.”

In a Final Written Decision primarily driven by claim construction, the Board held that the Petitioner had met its burden of proof with respect to challenged claims 15 and 17 under 35 U.S.C. § 102(b) and claims 2, 5-11, 13, 14, 16, 26, 28-33, 35-37, 39, and 40 under 35 U.S.C. § 103(a). However, the Board held that Petitioner did not meet its burden with respect to claims 12, 27, 34, and 38. Continue reading

Final Written Decision (Motion to Amend) IPR2013-00020

Takeaway: Final Written Decision in which half of the challenged claims survived. Motions to Amend should propose only a one for one substitution of claims and must address the patentability of the substitute claims over any prior art known by Patent Owner.

In the Final Written Decision, the Board held that claims 1-10, 13 and 14 of the ’364 Patent are unpatentable, but Petitioner was not able to show that claims 11, 12, and 15-24 are unpatentable. The Board also denied Patent Owner’s Motion to Amend. Continue reading

Final Written Decision IPR2013-00004 IPR2013-00257

In the Final Written Decision, the Board determined that the challenged claims of the ’926 Patent (claims 30, 31, 40, 41, 43, 52, 55, 59, 72, and 75) are unpatentable as obvious under 35 U.S.C. § 103 over three prior art references (Zauras, Pad++, and SVF) and are unpatentable as obvious under 35 U.S.C. § 103 over four prior art references (Zaurus, Hara, Tsutsumitake, and SVG). The ’926 Patent relates to the scalable display of Internet content on mobile devices by enabling the content to be rendered, zoomed, and panned for better viewing on small screens and standard monitors. Continue reading

Denying Petitioners Motion for Joinder CBM2014-00012

Takeaway: Joinder of two proceedings filed at substantially different times will not likely be granted where the joinder could render it difficult for the Board to complete the earlier filed proceeding within the statutory deadline.

In its Order, the Board denied the petitioners’ motion for joinder with the covered business method proceeding CBM2013-00014, primarily because the joinder would require a lengthy delay in the ongoing CBM2013-00014 proceeding. Continue reading

Authorizing Motion for Additional Discovery IPR2013-00453

Takeaway: Any motion for additional discovery should be narrowly tailored and show that discoverable documents relevant to the question exist.

In its Order, the Board granted Patent Owner’s request for authorization to file a Motion for Additional Discovery regarding the relationship between Petitioner and other entities, specifically entities that were served a complaint more than a year before the Petition in this case was filed. The Board authorized Patent Owner to file a Motion for Additional Discovery of no more than 15 pages and authorized a Petitioner opposition of no more than 15 pages. The Board cautioned that the Motion is unlikely to be granted if it is unduly broad or requests “all documents in the possession, custody, or control . . . that refer or relate to . . . .” The Board stated that Patent Owner should address what evidence shows that Petitioner has discoverable documents that are relevant to the question of real parties-in-interest. Continue reading