Conduct of the Proceeding CBM2014-00184, -00185

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Takeaway: When Petitioner objects to Patent Owner’s Response and an accompanying Declaration, Patent Owner cannot file corrected versions unless a motion to submit supplemental information is first authorized and granted.

In its Decision, the Board denied Patent Owner’s and Petitioner’s requests to expunge a declaration submitted with Patent Owner’s Response and also denied Patent Owner’s request to submit substitute a Corrected Patent Owner’s Response and Amended Declaration.

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Denying Request to File Corrected Patent Owner Response Removing Citations to Expunged Exhibit CBM2014-00133, 135

Takeaway: Arguments that rely upon statements made in an exhibit that is later expunged would be considered attorney argument, which is to be given little or no weight, such that there would be no need for cross examination of the person who made the statements.

In its Order, the Board granted Patent Owner’s request to expunge an exhibit and denied Petitioner’s request that Patent Owner be ordered to file a corrected Patent Owner Response. Continue reading

Denying Leave to File Second or Corrected Motion to Amend IPR2013-00417

Takeaway: A patent owner must establish, in its motion to amend, written description support in each ancestral application that is in the chain of applications leading to the application with the earliest filing date desired by the patent owner.

In its Order, the Board (1) denied Patent Owner’s request to address the disclosure of five intermediate applications in the continuity chain of the ’788 Patent, (2) denied Patent Owner’s request to file a second Motion to Amend, and (3) authorized Patent Owner to file as supplemental evidence 12 copies of the Fry reference. 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

Denying Request to File Amended Response IPR2013-00334

Takeaway: If you foresee requesting relief, such as authorization to file a motion for leave to file an amended paper, do so as soon as possible in order to allow the Board ample time to provide such relief where warranted.

In its Order, the Board denied Patent Owner’s request for authorization to file a Motion for Leave to file an amended Response. Patent Owner requested a number of emergency extensions for the Patent Owner Response, and was ultimately granted 10 days. Then, over a month and a half after filing the Patent Owner Response, Patent Owner filed a Revised Patent Owner Response without any notification to the Board. The Board expunged the unauthorized entry. Patent Owner then requested a telephone call with the Board, and alleged that Patent Owner previously had insufficient funds to retain a technical expert in support of their positions in this and six other trials. The Board told the Patent Owner that had earlier requests for relief been raised, the Board may have been able to provide possible relief where warranted, but after the fact no relief would be granted. Continue reading

Denying Request for Authorization to File Motions for Leave, Stay, and Amendment of Schedule IPR2013-00335

Takeaway: Any relief from the trial schedule requires a showing of good cause, and should be requested early. Any good cause will be weighed against the one-year statutory deadline for the proceeding.

In its Order, the Board denied Patent Owner’s request for authorization to file: (1) motion for leave to file a first revised patent owner’s response to decision to institute trial for IPR; (2) motion for amendment of schedule; and (3) motion to stay proceedings. Continue reading