Takeaway: The Board will only grant a request for additional pages beyond the 15 page limit for motions to amend if the issues in a case are overly complex or the claims are so voluminous that it would be unreasonable for the Patent Owner to meet the page limit.
In its Order, the Board denied a request by Patent Owner to file a consolidated motion to amend claims in two patents in two separate proceedings. The Board indicated that the two patents included different claims, and that the substitute claims would be different. Thus, the Board believed that a motion to amend claims should be separately filed in each proceeding. Continue reading
Takeaway: More than one motion to exclude can be filed by each party, but the total count of pages cumulative over all motions to exclude cannot exceed the fifteen-page limit per party.
In its Order, the Board addressed a number of evidentiary issues raised first in a chain of emails and then during a conference call held on March 24, 2014. The Board authorized Patent Owner to file a substitute exhibit to the Patent Owner Response. A number of appendices were apparently omitted from the Exhibit due to a clerical error. The Board ordered that Petitioner must serve any objections to the appendices within five days of service of the substitute Exhibit. Continue reading
Takeaway: Co-petitioners must speak with one voice, and parties that wish to be separately represented should file a separate Petition.
In its Decision, the Board dismissed-in-part and otherwise denied Petitioner’s Motion to Reconstitute itself by excluding Apple Inc. from the proceeding. Specifically, Petitioner requested elimination of Apple without any estoppel against Apple and authorization for Apple to file a separate petition by itself that is identical to the one filed in this proceeding with a request to join the new proceeding with this proceeding. Previously, the Board had ruled that even though there were multiple entities listed as petitioners, they must speak as one voice and one “Petitioner” when filing papers with the Board. After that, Petitioner attempted to unilaterally reconstitute itself without Apple, and the Board filed an order stating that this was inappropriate and Apple was still a member of the five companies regarded as Petitioner. Petitioner then requested leave to file a Motion to Reconstitute itself, and the Board authorized the briefing. Continue reading
Takeaway: A protective order is a requirement when filing a motion to seal. Any information in the proceeding subject to a protective order will become public if identified in a final written decision.
In its Order, the Board authorized Patent Owner, PPC, to file a motion to seal along with a proposed protective order before the filing of its patent owner response. As the Board noted, a protective order is a requirement when filing a motion to seal, and that any deviations from the default standing protective order must be indicated by red-line. 37 C.F.R. § 42.54. Continue reading
Takeaway: The Board will grant motions to submit supplemental information under 37 C.F.R. § 42.123(b), if accompanied by an affidavit or declaration sufficiently explaining why the information could not reasonably have been obtained earlier.
In the Order, the Board granted Patent Owner’s request to file a motion to submit supplemental information under 37 C.F.R. § 42.123(b). Patent Owner is seeking to antedate prior art and asserts that a deposition transcript and related exhibits provide corroboration of the purported conception of the invention. The Board authorized the filing of a motion to submit the information, instructing that the motion must address the requirements for late submission of supplemental information and be accompanied by an affidavit or declaration of counsel explaining why the information could not reasonably have been obtained earlier. Continue reading
The Board ordered briefing on the question of whether disputed questions in the deposition of Patent Owner’s Declarant sought information within the scope of cross-examination of the Declarant and whether the information is privileged and/or whether privilege was waived. During the deposition of Patent Owner’s Declarant, Patent Owner’s counsel instructed the Declarant not to answer questions regarding Declarant’s discussion with Patent Owner’s counsel, because that information was privileged. Petitioner argued that the information sought was relevant and within the scope of cross-examination, because the Declarant testified during the deposition that he had no personal knowledge of certain photographs discussed in his declaration, and that the photographs were provided to him by Patent Owner’s counsel. Petitioner believes this information is relevant to determining whether the statements by Declarant are admissible, and that the discussions between Declarant and Patent Owner’s counsel are not privileged and/or such privilege is waived. Continue reading
Takeaway: Being a co-defendant or concurrent defendant in a related litigation is not enough to prove that an entity is a real party-in-interest; evidence is needed that the alleged real parties-in-interest guide or otherwise control the review.
In its Final Written Decision, the Board found that all remaining claims of the ’111 Patent that were instituted for review (claims 2, 3, 5, 6, 11, 12, 18-20, and 22) are unpatentable. The ’111 Patent describes a navigation system in which “information from a Global Position System (GPS) [is used] to obtain velocity vectors, which include speed and heading components, for propagating or ‘dead reckoning’ the vehicle position from a previous position to a current position.” Continue reading
Takeaway: CBM proceedings are subject to all the standards and procedures of post-grant review (i.e., 35 U.S.C. §§ 321-329) except for those expressly carved out (i.e., 35 U.S.C. §§ 321(c) and 325(b), (e)(2), and (f)). This includes statutory bar based on filing a civil action challenging the validity of a claim of the patent.
In its Decision, the Board declined to institute a CBM because the petition was statutorily barred under 35 U.S.C. § 325(a)(1), which states that a “post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” The Board agreed that 35 U.S.C. § 325(a)(1) applies to CBM proceedings, because CBM proceedings are subject to all the standards and procedures of a post-grant review (i.e., 35 U.S.C. §§ 321-29) except for those expressly carved out (i.e., 35 U.S.C. §§ 321(c) and 325 (b), (e)(2), and (f)). Continue reading
Takeaway: The Board will likely allow concurrent ex parte reexamination and IPR proceedings. However, the CRU will likely find no SNQ if based on same references in the petition for the IPR.
In its Order, the Board denied Petitioner’s Motion to Terminate, or alternatively stay, ex parte reexamination no. 90/013,148, in which Patent Owner had requested to amend the claims at issue in this proceeding. Petitioner argued that Patent Owner’s pursuit of amendments in the ex parte reexamination is inconsistent with Congress’s intent that the IPR tackle all issues at once and is also inconsistent with the Board’s guidance that ex parte reexamination is for structural changes to the claims. The Board was not persuaded by these arguments and instead found that the AIA does not prohibit Patent Owners from amending its claims by other means. Further, it agreed with Patent Owner that its pursuit of amendments in ex parte reexamination is not inconsistent with the guidance in this proceeding, and the Board did not restrict amendment via ex parte reexamination to complete restructuring of claim structure. The Board requested that Patent Owner notify the Board as soon as possible whenever the status of the ex parte reexamination changes. Continue reading