Petitioner Required to Map Prior Art Claims to Provisional Application IPR2015-01315

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Takeaway: When, between the filing of a Petition and the Board’s decision on institution, it appears that there has been a change in the law that would require additional information to be included in a Petition, the Board may permit the Petitioner to submit a short supplemental paper to provide such information and, if the Patent Owner has already filed its Preliminary Response, the Board may permit the Patent Owner to submit a response to Petitioner’s additional paper.

In its Decision, the Board authorized Petitioner to file a non-argumentative claim chart showing where written description support for the claims of a cited prior art reference could be found in a related provisional patent application and authorized Patent Owner to file a response to Petitioner’s claim chart.

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Decision Granting Petitioner Page Extension IPR2014-00781

Takeaway: In light of Director Lee’s Posting announcing upcoming changes to PTAB rules, the Board may permit petitioners 25 pages, instead of 15, to reply to a patent owner’s Response.

In its Decision, the Board granted Petitioner’s request for an additional ten pages for its Reply to Patent Owner’s Response.

The Board noted that Petitioner’s request is consistent with USPTO Director Lee’s Posting on March 27, 2015. Continue reading

Decision Regarding Request for Sur-Reply IPR2013-00578

Takeaway: The Board allowed Patent Owner to use a portion of its Reply to the Opposition to the Motion to Amend to address arguments made by Petitioner in its Reply to the Patent Owner Response regarding swearing behind of one of the references, because the argument applies to both the Motion to Amend and the original claims.

In its Order, the Board summarized a call regarding Patent Owner’s request for a sur-reply brief regarding the issue of the date of invention of one of the references relied on in the Petition. With its Patent Owner Response, Patent Owner included a declaration from the inventor of the ’804 Patent, “swearing behind” one of the references relied on in the Petition. Continue reading

Order Regarding Page Limit Violations IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055

Takeaway: The Board required parties to refile briefs and replies that did not meet the page limit requirement, even where the additional pages were found in an appendix added to the brief.

In its Order, the Board summarized the results of a conference call held on September 3, 2014. The Board previously authorized the parties to file briefing regarding whether Petitioner identified all real-parties-in-interest and what relief should be granted if Petitioner did not. Each party’s brief was limited to 15 pages. Patent Owner pointed out that that Petitioner had included Appendix A attached to Petitioner’s 15-page brief, and that the Appendix included Petitioner’s responses to Patent Owner’s Statement of Facts. The Board agreed and authorized Petitioner to refile its brief by the close of business September 4, to comply with the 15 page limit. Continue reading

Denying Request for Additional Pages CBM2013-00052, 53, 54

Takeaway: The Board may deny a party’s request for additional pages to complete that party’s replies if a showing of extraordinary circumstances has not been made.

In its Order, the Board declined Petitioner’s request for authorization to file a motion for waiver with respect to page limits set for Petitioner’s Replies to Patent Owner’s Responses.  The proposed motion for waiver was pursuant to 37 C.F.R. § 42.5(b) in regard to the page limits set by 37 C.F.R. § 42.24(c)(1). Continue reading

Denying Motion for Additional Pages for Petitioner Reply IPR2013-00517

Takeaway: The Board will decline to consider arguments or evidence that is not discussed in the patent owner response, and thus such a violation cannot be a basis for the other party obtaining authorization for additional pages for its response/reply.

In its Order, the Board denied Petitioner’s request for authorization to file additional pages with its Reply. Petitioner requested additional pages for its Reply, because Patent Owner’s Response was accompanied by 110 exhibits and Petitioner was concerned that Patent Owner had effectively circumvented the rule limiting the number of pages for the Response. The Board determined that Petitioner had not presented a sufficient reason to supports its request for extra pages for its Reply. Further, the Board stated that “[t]o the extent that [Patent Owner] included arguments or evidence in the 110 exhibits that are not also supported by its Patent Owner Response, those arguments and evidence will not be considered when we prepare our final decision.” Continue reading

Decision on Waiver of Argument and Denying Request for Additional Pages in Reply CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046

Takeaway: Failing to object to admissibility of evidence will not waive a counter argument against the underlying fact that was being alleged by the non-objected to evidence. A request for additional pages for a Reply will not be granted absent extraordinary circumstances.

In its Order, the Board addressed three separate issues. First, the Board ordered that Patent Owner did not constitute waiver of its argument that a reference is not a “printed publication.” Second, the Board denied Petitioner’s request for three additional pages for its Reply. Third, the Board denied Patent Owner’s contingent request for leave to file motion to submit supplemental information. Continue reading