Order Granting Motion to Stay Reexam IPR2014-00043

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Takeaway: A likely inconsistent result between an ex parte reexamination and an inter partes review is an important consideration in whether a stay of the reexamination is warranted.

In its Order, the Board granted Petitioner’s request for a stay of the co-pending ex parte reexamination and did not address Petitioner’s alternative request to consolidate the reexamination.  The Board may stay, transfer, consolidate, or terminate another proceeding or matter involving the same patent before the Office.  However, the Board “ordinarily will not stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch.” Continue reading

Order Denying Motion for Leave to File Motion to Exclude IPR2013-00595

Takeaway: Unless there is a compelling reason, the Board will not entertain motions to exclude prior to the time stated in the scheduling order.

In its Order, the Board denied Patent Owner’s Motion to File a Motion to Exclude the Testimony of Petitioner’s witness. Patent Owner argued that Petitioner’s witness indicated during his deposition that he had not read the principal reference relied upon by Petitioner in its entirety, and was unwilling or unable to respond to questions about the reference or to testify whether the teachings of certain references could be combined.  Patent Owner filed without authorization a “rough copy” of the witness’s deposition transcript with exhibits.  Petitioner responded that Patent Owner’s contentions are “harsh mischaracterizations” and that any weaknesses in its witness’s testimony relate to the weight of his testimony, not the admissibility. Continue reading

Order Regarding Formatting of Petitions IPR2013-00547, 548, 552, 553

Takeaway: Claim charts accompanying a petition should not include any arguments, claim construction, statements of the law, or detailed explanations as to why a claim limitation is taught or rendered obvious by the prior art. They should only be used to provide an element-by-element showing of how the prior art teaches the limitation of a claim.

In its Order, the Board discussed various deficiencies with Petitioner’s Corrected Petitions. First, the Board addressed improper argument in claim charts.  The Board’s Notice of Filing advised Petitioner of improper arguments in the claim charts in its Petitions and gave Petitioner five days to correct the defect.  Patent Owner asserted that the claim charts in the Corrected Petitions still contained improper argument and asked to have the Petitions dismissed. Continue reading

Order Providing Guidance on Motions to Exclude and Strike IPR2013-00288

Takeaway: The Board does not want to see any motions arguing that a party’s reply contains new arguments or evidence.

In its Order, the Board advised the parties that neither a motion to strike nor a motion to exclude is the proper mechanism to argue that the other party’s reply contains new arguments or evidence. The Board also authorized Patent Owner to file a motion for observation and Petitioner to file a response to Patent Owner’s observation. Continue reading

Order Dismissing in Part Motion to Exclude IPR2013-00236

Takeaway: Neither a motion to strike nor a motion to exclude is the proper vehicle for determining whether a reply exceeds the proper scope.

In its Order, the Board dismissed-in-part Patent Owner’s Motion to Exclude Petitioner’s Reply and a declaration submitted with Petitioner’s Reply. Patent Owner argued that those documents should be excluded because (1) they are based on an incorrect claim interpretation, (2) the declarant’s testimony is contradictory and unreliable, and (3) they make new arguments that are not responsive to the Patent Owner’s Response.  Petitioner argued that the first two points go to the weight of the declarant’s testimony, not its admissibility, and that the third point is not appropriate for a motion to exclude.  Petitioner cited to a previous order in this proceeding refusing to authorize a motion to strike the documents and a similar situation in Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Paper 42 (May 12, 2014).  Petitioner then requested that the motion be dismissed. Continue reading

Denying Request for Authorization to File Motion to Supplement IPR2014-00287

Takeaway: The Board may deny a party’s request for authorization to file a motion to supplement if, among other things, there has been an appreciable delay between the date of availability of the additional testimonial evidence and the date of the request for authorization to file the motion.

In its Order, the Board summarized a teleconference with counsel for the parties that had taken place on May 19, 2014.  During the teleconference, Petitioner had requested authorization to file a motion to supplement its Petition to provide additional testimony from a third party deposition that it had taken in an unrelated litigation regarding the public availability of a reference.  Petitioner’s submission in this regard was proposed under the broad authority of the Board under 37 C.F.R. § 42.5 to determine the proper course of a proceeding.  Patent Owner opposed. Continue reading

Summary of Conference Concerning Newly Discovered Prior Art IPR2013-00229

Takeaway: While parties have a duty of candor and good faith under 37 C.F.R. § 42.11 in inter partes review and other PTAB proceedings, there is no procedure in such proceedings for submitting an information disclosure statement; other mechanisms may be employed for bringing newly discovered prior art to the Board’s attention.

In its Summary, the Board referred to a teleconference with the parties during which Patent Owner had advised that it had become aware of additional prior art cited in a corresponding European patent application.  Because there is no procedure in an inter partes review for submitting prior art via an information disclosure statement, Patent Owner asked the Board for its recommendation on what Patent Owner needed to do in order to comply with its duty of candor and good faith under 37 C.F.R. § 42.11. Continue reading

Granting Motion for Leave to File a Motion for Additional Discovery IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055

Takeaway: Even where the Board believes there is sufficient reason to grant additional discovery, the Board will only grant additional discovery if the proposed discovery is narrowly focused.

In its Order, the Board granted Patent Owner leave to file another motion for additional discovery on the identification of real parties-in-interest. Patent Owner had previously requested additional discovery on this issue, and been denied. In denying a request for rehearing on whether to grant additional discovery, the Board ordered the parties to try to reach agreement about appropriate and narrowly focused additional discovery. No agreement was reached. Continue reading

Order Denying Motion for Admission Pro Hac Vice CBM2014-00119

Takeaway: In order to establish the requisite familiarity with the subject matter of a proceeding in a motion for admission pro hac vice, one must provide specific information such as having read the patent or the petition, being familiar with the prosecution history of the patent, having a technological background or particular experience related to the technology covered by the patent, or having played a substantive role in any co-pending litigation.

In its Order, the Board denied without prejudice Patent Owner’s Unopposed Motion for Admission of Attorney Stephen E. Roth Pro Hac Vice.  The Board began by stating that it may recognize counsel pro hac vice during a proceeding upon a showing of good cause provided that the lead counsel is a registered practitioner.  The non-registered practitioner may appear pro hac vice “upon a showing that counsel is an experienced litigating attorney and has established familiarity with the subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c). Continue reading

Order Denying Motion to Stay Petitions IPR2013-00194, IPR2013-00195, CBM2013-00013

Takeaway: The Board is unlikely to stay PTAB proceedings pending appeal of a district court’s finding of invalidity, particularly where the issues in the district court and in front of the Board are different.

In its Order, the Board denied Patent Owner’s request to stay two related inter partes review proceedings and a related covered business method review in light of a district court’s finding that all of the challenged patents were invalid as being indefinite.  In light of its ruling regarding the requested stay, the Board granted the parties’ previous request for oral hearing. Continue reading