Decision Denying Institution of Inter Partes Review IPR2014-00236, 239, 240

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Takeaway: In determining whether the one-year bar of 35 U.S.C. § 315(b) estops the institution of an IPR, the operative complaint is the original complaint, even if there are subsequent amended complaints, unless the original complaint is dismissed without prejudice.

In its Order, the Board denied institution of three inter partes reviews because the Petitions were not filed within the one-year period set forth in 35 U.S.C. § 315(b).  Each of the three challenged patents is at issue in a related district court litigation, and the complaint and first amended complaint were served on Petitioner more than one year prior to the filing of the inter partes reviews, but a subsequent complaint was served within the one-year time frame.  Petitioner made three arguments that the bar did not apply to the three Petitions. Continue reading

Granting Motion for Leave to File Motion for Additional Discovery and to File Motion to Seal IPR2013-00358

Takeaway: The Board prefers that parties use the default protective order, and if parties choose not to, they must explain why.

In its Order, the Board granted Patent Owner’s Motion for Leave to File a Motion to Seal and Petitioner’s Motion for Leave to File a Motion for Additional Discovery.

Regarding the Motion for Leave to File a Motion to Seal, during the depositions of two of Patent Owner’s declarants, Patent Owner indicated that certain portions of the transcript should be designated as confidential prior to filing the transcripts. The parties could not agree on the course of action.  The Board stated that the party intending for the document to be sealed must file a motion to seal with a proposed protective order.  The Board cautioned that along with the motion to seal, Patent Owner must file for each transcript a confidential unredacted version under seal and a non-confidential redacted version for the public.  The motion to seal must also explain the basis for every redaction made to the deposition transcripts.  The Board also encouraged the parties to adopt the default protective order and stated that if the parties ask for additional protections, the motion should identify why those protections are warranted. Continue reading

Denying Motion to Strike Reply IPR2013-00242

Takeaway: A reply may respond to arguments raised in the corresponding patent owner response, and not raise new issues or submit new evidence that reasonably could not have been presented in the initial petition.

In its Decision, the Board denied Patent Owner’s Motion to Strike various portions of the “Reply to Patent Owner Response.” Patent Owner argued that Petitioner’s reply went beyond the proper scope permitted for a reply. In particular, Patent Owner objected to (1) Petitioner’s belated reliance on a second embodiment in one of the asserted prior references; (2) Petitioner’s belated reliance on a claim for the first time in the asserted prior reference; (3) Petitioner’s reliance on a new prior art reference; and (4) Petitioner’s discussion of a new obviousness ground. Continue reading

Denying Motion for Leave to file a Motion to Submit Supplemental Information IPR2014-00100

Takeaway: Submitting supplemental information under 37 C.F.R. § 42.123(a) as a vehicle to respond to a possible position that another party may take in the future is improper, and Petitioner may not raise a new ground of patentability after institution of a trial, even assuming the Patent Owner offers its own claim construction, and patentability contentions based on that construction, in a Patent Owner Response.

In its Order, the Board denied Petitioner’s request for authorization to file a Motion to Submit Supplemental Information “to present additional grounds of unpatentability.” Petitioner requested authorization to submit Patent Owner’s infringement contentions (Ex. 1009) from a related district court litigation, plus three additional prior art references (Exs. 1010-1012). The Board explained that submitting supplemental information under 37 C.F.R. § 42.123(a) as a vehicle to respond to a possible position that another party may take in the future is improper. Moreover, Petitioner may not raise a new ground of patentability after institution of a trial, even assuming the Patent Owner offers its own claim construction, and patentability contentions based on that construction, in a Patent Owner Response. Thus, the Board denied Petitioner’s request for authorization to file a Motion to Submit Supplemental Information, and indicated that it would expunge Exhibits 1009-1012 from the record. Continue reading

Denying Request to Withdraw Motion for Joinder IPR2014-00271

Takeaway: Withdrawing a Motion for Joinder is not automatic.

In its Order, the Board denied Petitioner’s request for authorization to withdrawing its Motion for Joinder. Petitioner’s Motion for Joinder proposed joining the instant proceeding with IPR2013-00292, which involves the same patent, and extending the schedule of IPR2013-00292 by approximately five months. Petitioner then requested authorization to withdraw its Motion for Joinder, asserting that such authorization was warranted because (1) Patent Owner had taken different stances in the Preliminary Responses in the two proceedings, resulting in an unwarranted complication raising estoppel questions; and (2) joining the proceedings would delay the schedule for the trial in IPR2013-00292. Although Patent Owner had initially opposed Petitioner’s Motion for Joinder, Petitioner later argued that its basis for opposing at that time was that it did not feel that it was appropriate to enlarge the scope of IPR2013-00292. Continue reading

Denying Motion to Compel Additional Discovery IPR2013-00566

Takeaway: Among other things, a party requesting additional discovery must already be in possession of a threshold amount of evidence or reasoning beyond speculation that useful material will be uncovered.

In its Decision, the Board denied Patent Owner’s Motion to Compel Additional Discovery. Patent Owner filed a Motion to Compel Additional Discovery, seeking four categories of discovery from Petitioner, which Petitioner opposed. In particular, Patent Owner sought additional discovery relating to certain secondary considerations of non-obviousness, including long-felt but unmet need for claimed invention. Continue reading

Denying Patent Owner’s Request for Rehearing on Motion to Correct Petition IPR2013-00631

Takeaway: It is possible to correct clerical defects in a Petition in some cases, thereby maintaining the Petition filing date, even when the defect is a statutory one if the clerical defect has no material effect on Patent Owner’s ability to file a Preliminary Response.

In its Decision, the Board denied Patent Owner’s Request for Rehearing Petitioner’s Motion to Correct the Petition. Petitioner filed its petition for inter partes review on September 27, 2013. The Petition did not include copies of two relied-upon, non-English foreign patents (although it did provide English-language translations of both patents, and identified both by their respective foreign patent numbers). The Board notified Petitioner of this error, but still accorded the Petition a filing date of September 27, 2013, in a Notice of Filing Date Accorded to Petition issued by the Board on October 1, 2013. Petitioner filed a corrected petition on October 11, 2013, addressing all of the errors in the Board’s October 1 Notice. The Patent Owner filed its Preliminary Response on December 4, 2013, in which the Patent Owner argued that the Board could not consider the Petition because it failed to comply with 35 U.S.C. § 312(a) and because Petitioner had failed to comply with 37 C.F.R. §§ 42.6, 42.63, 42.104, 42.105, and 42.016. Continue reading

Granting Leave to File Motion to Compel Additional Discovery IPR2013-00566

Takeaway: No authorization is required for a party to file a Motion to Exclude Evidence.

In its Order, the Board granted Patent Owner leave to file a Motion to Compel Additional Discovery, concluding that additional briefing was needed. Prior to the initial conference to discuss the Scheduling Order and any contemplated motions, Patent Owner indicated that it intended to file a Motion to Compel Additional Discovery as well as a Motion to Exclude Evidence. Continue reading

Denying Motion for Reconsideration of Denial of Motion for Leave to File First Amended Response IPR2013-00335

Takeaway: Motions that do not “move the ball forward,” but which instead are likely to add cost and unnecessarily extend the proceeding, are not likely to be granted.

The Board had previously issued Orders denying Patent Owner’s Motion for Leave to File a First Revised Patent Owner’s Response to Decision to Institute Trial for Inter Partes Review.  Patent Owner then filed Motion for Reconsideration of Patent Owner’s Motion for Leave to File Patent Owner’s First Amended Response to Decision to Institute Trial for Inter Partes Review (“Request for Reconsideration”).

In its Order, The Board denied the Patent Owner’s Request for Reconsideration because it was misplaced in several respects.  For example, a party does not have to concede that leave is required to amend a Patent Owner Response after the due date for filing a Patent Owner Response.  Instead, there is simply no right to amend a Patent Owner Response after its due date.  Also, 37 C.F.R. §§ 42.5, 42.25 recite expressly that papers not otherwise provided for require Board authorization.

Mobotix Corp. v. E-Watch, Inc., IPR 2013-00335
Paper 10: Order Denying Patent Owner’s Motion for Reconsideration of Patent Owner’s Motion for Leave to File Patent Owner’s First Amended Response to Decision to Institute Trial for Inter Partes Review
Dated: April 16, 2014
Patent 7,228,429
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Kim

Granting Motions for Leave to File Motion to Stay and to Compel Production IPR2014-00041, 43, 51, 54, 55

Takeaway: A claim construction in a parallel reexamination that is inconsistent with a claim construction in an inter partes review may support a motion to stay or consolidate the parallel reexamination.  Additionally, a party seeking to compel production of documents must first obtain authorization from the Board; otherwise, the compelled evidence will not be admitted in the proceeding.

In its Order, with respect to IPR2014-00043, parallel reexamination of the subject ‘435 Patent was ongoing.  Petitioner asserted that because a claim construction had been adopted in the reexamination that was inconsistent with a claim construction that had been adopted by the Board in IPR2014-00043, a motion to stay or consolidate the parallel reexamination was appropriate.  Thus, the Board authorized Petitioner to file motion for stay or consolidation of the parallel reexamination, and authorized the Patent Owner to file an opposition. Continue reading