Denying Institution When Challenged Claims Were Disclaimed IPR2015-01234

Takeaway: If a patent owner disclaims the challenged claims prior to institution of trial, such action will not be considered a request for adverse judgment, and it is likely that the Board will deny institution of the petition on the basis of the disclaimers.

In its Decision, the Board denied institution of all challenged claims (38-42, 44, and 45) of the ’492 Patent. Continue reading

Statutory Disclaimer Is Not Always Treated As An Adverse Judgment IPR2015-00736

Takeaway: The Board may elect not to treat a patent owner’s statutory disclaimer as an adverse judgment based on 37 C.F.R. § 42.73(b)(1)-(4).

In its Decision, the Board denied Petitioner’s Request for Rehearing. The Board had denied institution of inter partes review of the ’591 patent because Patent Owner filed a statutory disclaimer under 35 U.S.C. § 253. Petitioner argued that the Board should have considered this disclaimer as a request for adverse judgment. The Board did not designate the Decision Denying Institution as an adverse judgment for two reasons. Continue reading

Conduct of the Proceeding IPR2014-01002

Takeaway: The Board will not enter adverse judgment against a patent owner who cancels the challenged claims in a co-pending reexamination proceeding before a reexamination certificate is issued and the time to appeal has expired.

In its Decision, the Board declined to enter adverse judgment against Patent Owner under § 42.73(b)(2) and also determined that, under the circumstances presented, termination of the proceeding without a final written decision (as requested by Patent Owner) was not appropriate.

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Denying Authorization to Terminate Proceeding in Petitioner’s Effort to Avoid Estoppel IPR2015-00035

Takeaway: A petitioner may seek to request judgment against itself at any time without Board authorization; however, Board authorization is required if a petitioner further seeks to terminate the proceeding without a final written decision and its accompanying estoppel effects.

In its Decision, the Board denied Petitioner’s Request for Authorization to File a Motion to Terminate trial without a final written decision. Petitioner “sought authorization to file a motion to terminate trial that would result in a judgment without a final written decision.” Petitioner sought an adverse judgment “due to Petitioner’s abandonment of the contest under 37 C.F.R. § 42.73(b)(4), but [also] sought to avoid the estoppel effects of a final written decision.” Patent Owner opposed. Continue reading

Granting Request for Adverse Judgment IPR2014-01053

Takeaway: The Board may terminate a trial based on a Request for Adverse Judgment without delay, even where termination may prevent a subsequently filed IPR by the Petitioner from being joined and thus rendering that subsequent IPR statutorily barred.

In its Order, the Board granted Patent Owner’s Request for Adverse Judgment in regard to claims 1-5 and 8 of the ’501 patent. The Board thus concluded that claims 1-5 and 8 of the ’501 patent are not patentable, and indicated that a certificate canceling these claims would issue in due course. Continue reading

Final Written Decision IPR2014-00128

Granting Motion to Amend Cancelling All Challenged Claims

Takeaway: The Board may treat a non-contingent motion to amend that cancels all of the challenged claims as a request for adverse judgment.

In its Final Written Decision, the Board granted Patent Owner’s Motion to Amend which had requested the cancellation of each of challenged claims 1, 2, 5–9, and 11 of the ’688 patent. In doing so, the Board treated Patent Owner’s Motion to Amend as a request for adverse judgment, and in response, entered judgment against Patent Owner with respect to claims 1, 2, 5–9, and 11 of the ’688 patent. Continue reading

Order Regarding Failure to File a Patent Owner Response IPR2013-00498

Takeaway: Failing to file a patent owner response, without more, does not justify entry of adverse judgment against patent owner. Also, attorneys remain counsel until a motion to withdraw has been filed and granted.

In this Order, the Board refused to authorize a conference call to discuss whether Patent Owner failing to file a Patent Owner Response constitutes abandonment of the contest justifying an award of judgment to Petitioner. The Board explained that failure to file a patent owner response does not justify entry of adverse judgment. Also, Patent Owner’s counsel had sent an email to the Board stating that they were no longer counsel for Patent Owner. However, the Board put them on notice that they remain counsel for Patent Owner until a motion to withdraw has been filed and granted. Continue reading

Final Written Decision (Motion to Amend) CBM2013-00005

Takeaway: Patent Owner should clearly indicate in the brief, if original claims are only to be canceled if the proposed substitute claims are accepted. Even if Patent Owner is canceling original claims, the Patent Owner response cannot be used to present requirements for a Motion to Amend. A Motion to Amend should include a clear indication of what original claim a proposed claim is to be substituted for and how that claim is responsive to a ground of unpatentability, support in the specification for the entire claim, not just the added limitations, and an explanation of why the substitute claims are patentable over any known prior art.

In its Order, the Board granted Patent Owner’s request to cancel claims 1-4, denied Patent Owner’s request to add proposed claims 5-8, and dismissed Patent Owner’s motion to exclude evidence. Continue reading

Denying Motion to Reconstitute Petitioner CBM2014-00013

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