Denying Motion to Compel Cross-Examination CBM2014-00025

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Takeaway: If a petitioner submits a declaration with the petition and then decides not to rely upon the declaration, the petitioner can indicate such and prevent cross-examination of the deponent in cases where the declaration was not cited in the relevant portions of the petition or the decision to institute.

In its Order, the Board denied Patent Owner’s Motion to Compel Cross-Examination of Petitioner’s sole declarant in support of the Petition. The parties had agreed to deposition dates for the declarant, and one week before the deposition, Petitioner indicated that it would no longer be relying on the declaration in the proceeding and cancelled the deposition.  The Board denied Patent Owner’s Motion to Compel because, as noted by Petitioner, Petitioner cannot further rely on any statements made in the declaration.  Therefore, failure to provide the declarant for cross-examination is to the detriment of Petitioner.  Further, neither the Board nor Petitioner referred to the declaration in neither the relevant portions of the Petition nor the Decision to Institute. Continue reading

Denying Authorization to File Motion for Additional Discovery CBM2014-00008

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Takeaway: A party’s speculation that materials for which routine discovery is being sought “could” contain inconsistent information is not sufficient under 37 C.F.R. § 42.51(b)(1)(iii).

In its Order, the Board denied Petitioner’s request for authorization to file either a motion for additional discovery or a motion to compel Patent Owner to produce certain materials as routine discovery.  The materials of interest were requested by Petitioner in advance of an upcoming deposition scheduled with Patent Owner’s declarant. Continue reading

Granting Motion for Leave to File Motion for Additional Discovery IPR2014-00367

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Takeaway: Requests for additional discovery will not be granted if they are unduly broad and burdensome, or if the information sought is otherwise available to the requesting party; and the mere possibility or allegation that something useful will be found is insufficient.

In its Order, the Board authorized Patent Owner to file a motion for additional discovery, and for Petition to file an opposition to that motion, with both papers being limited to five pages.  No reply was authorized. Continue reading

Decision on Patent Owner’s Motion to Stay IPR2014-00057

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Takeaway: Patent Owner’s appeal to the Federal Circuit in a related inter partes review proceeding involving the same patent, by itself, does not justify granting a motion to stay in a given inter partes review proceeding or allow the Board to waive the one-year final written decision requirement.

In its Decision, the Board denied Patent Owner’s Motion to Stay the instant proceeding pending the outcome of Patent Owner’s appeal to the U.S. Court of Appeals for the Federal Circuit in related IPR2013-00082.  According to the Board, Patent Owner had not met its burden of demonstrating that the instant proceeding should be stayed for at least a number of reasons. Continue reading

Decision on Petitioner’s Request for Declaration IPR2014-00041, 43, 51, 54, 55

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Takeaway: In the case where a declarant has reviewed and authorized application of his signature to a single omnibus declaration, but the omnibus declaration was divided into individual declarations that declarant did not review prior to filing, production of the single omnibus declaration and cross-examination of the declarant on the omnibus declaration are warranted.  

In the Decision, the Board addressed the situation where a single “omnibus” declaration was prepared for Patent Owner’s declarant in the five instant proceedings, but where in the end, five individual, non-identical declarations were submitted in the instant proceedings, respectively, rather than the single omnibus declaration.  In other words, the single omnibus declaration was divided up into five individual declarations that were filed in the five proceedings, respectively.  The five individual declarations were not identical to each other in that they had different numbers of paragraphs, with someone other than the Patent Owner’s declarant having decided which paragraphs would be included in each of the five declarations as filed. Continue reading

Decision Denying Institution IPR2014-00335

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Takeaway: A petition asserting obviousness grounds of unpatentability must articulate reasons with rational underpinnings to support the obviousness conclusion, including, where appropriate, how the prior art addressed a need or problem in the field of concern in the patent.

In its Decision, the Board denied institution of inter partes review, holding that Petitioner had not established a reasonable likelihood that it would prevail with respect to any challenged claim in the ‘469 patent.  The ‘469 patent relates to “systems and methods for an automated seed sampling and sorting system.”  Petitioner challenged the patentability of claims 55 and 58-60 as being obvious over a combination of five references (Horigane 1, Horigane 2, Keller, Kelley, and CN2510248 Y). Continue reading

Granting Leave to File Motion to Submit Supplemental Information IPR2013-00401, 404

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In its Order, the Board granted Petitioner’s request for authorization to file a Motion to Submit Supplemental Information. Petitioner sought to submit paragraph 179 from a report of Patent Owner’s expert that was filed in a related district court litigation.  Petitioner argued that the paragraph would impeach the expert’s testimony in this proceeding.  Patent Owner argued that Petitioner was taking paragraph 179 out of context, and that if the paragraph was submitted, then paragraphs 177 and 178 should be submitted as well. Continue reading

Decision Denying Institution IPR2014-00401

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Takeaway: A petition filed more than one year after the petitioner is served with a complaint alleging infringement will bar institution of inter partes review, even if that complaint is dismissed, if the dismissal is “with prejudice.”

In its Decision, the Board denied institution of inter partes review, holding that the Petition was time-barred under 35 U.S.C. § 315(b).  Petitioner was served with three complaints alleging infringement of the ‘180 patent.  The first was served on April 5, 2007, the second on March 17, 2010, and the third in 2013.  The third complaint was served within one year of the Petition’s filing date, and therefore, would not act as a bar to institution.  Petitioner argued that the 2007 and 2010 complaints did not bar institution for a number of reasons, each of which the Board rejected. Continue reading

Special Thanks

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The past 8 weeks, one of our summer associates, Anthony Glosson, has been contributing to the blog.  Tony is going into his 3L year at The George Washington University Law School.  Tony has been an asset to the blog and we wish him all the best in the upcoming school year.

Denying Leave to File Additional Briefing Regarding Updated Mandatory Notice IPR2014-00504

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In its Order, the Board denied Patent Owner’s request for authorization to file a Supplement to the Patent Owner Preliminary Response addressing Petitioner’s Updated Mandatory Notice. Following the filing of the Patent Owner Preliminary Response, Petitioner filed Updated Mandatory Notice stating now that Motorola Mobility and Google, Inc. are real parties-in-interest.  A decision on institution is due on September 18, 2014, and Patent Owner requested authorization to address the Updated Mandatory Notice. Continue reading