Denying Request for Rehearing of Institution Denial IPR2014-00809

Takeaway: If a petition includes a typographical error that leads to a decision not to institute, the correct course of action is not to file a request for rehearing, but instead to file a motion to correct the petition with a request to modify the decision.

In its Decision, the Board denied Petitioner’s request to rehear the Board’s decision not to institute review of claims 3, 26, and 27 of the ’792 Patent. In its Decision on Institution, the Board instituted review of claims 1, 2, and 4-17, but declined institution of claims 3, 26, and 27. Continue reading

Allowing Filing of Corrected Declaration IPR2015-00015, 17, 18

Takeaway: A petitioner may be allowed to file a corrected declaration to address improper incorporation by reference in an original declaration where the petition already properly cites to both the declaration and the material incorporated by reference, and the patent owner would not be prejudiced by the correction.

In its Order, the Board granted Petitioner’s request to file a corrected declaration to expressly include materials that were previously incorporated by reference and to file a corrected Petition to change the citations accordingly. Continue reading

Granting Second Motion to Correct Clerical Error in Petition IPR2014-00833

Takeaway: In making a motion to correct a clerical mistake, the movant must provide sufficient evidence that it is entitled to the relief requested and that the opposing party will not be prejudiced.

In its Decision, the Board granted Petitioner’s Second Motion to Correct a Clerical Mistake in the Petition. Petitioner previously filed a motion to correct a clerical mistake in the petition that was denied without prejudice for failure to set forth a full statement of the reasons for relief requested as required by 37 C.F.R. § 42.22(a)(2).  In the Second Motion, Petitioner provided further information.  Petitioner sought to file a corrected version of Exhibit 1007 to its Petition because an inadvertent error in labeling computer files led to an incorrect version of Exhibit 1007 being filed.  Petitioner also asserted that filing a corrected version of Exhibit 1007 would have no substantive effect on the proceeding because Patent Owner was able to adequately respond to the Petition, Patent Owner indicated it would not oppose the correction, and the Petition as filed already refers to the corrected version of Exhibit 1007.  Because of the lack of prejudice to Patent Owner, the Board was persuaded that the relief requested was warranted. Continue reading

Denying Motion for Leave to File Amended Petition CBM2014-00069, CBM2014-00070

Takeaway: If a petitioner accidentally neglects to include a challenge in its petition, then it is unlikely the Board will allow for the petition to be amended to include those grounds.

In its Order, the Board denied Petitioner’s Motion for Leave to File a Motion to Amend the Petition. Petitioner sought authorization to file a motion to include a review of dependent claims 2-11 of the ’901 Patent under 35 U.S.C. § 112, first paragraph, in CBM2014-00070.  Petitioner stated that it accidentally neglected to include the challenge originally, but did not provide any authority supporting its position that it should be allowed to add challenges to claims to the CBM review on a basis not presented in the Petition.  The Board stated that the Petition must “identif[y], in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based.” 35 U.S.C. § 322(a)(3).  Because Petitioner did not do so, the Board denied the Motion, but noted that Petitioner may file a separate petition on these grounds. Continue reading

Granting Motion for Leave to File Motion to Correct Clerical Error IPR2014-01373

Takeaway: If a party is requesting relief from the Board, it should do so in the form of a motion, which usually also requires that the Board authorize the motion before filing.

In its Order, the Board granted Petitioner authorization to file a motion to correct a clerical error. Petitioner filed a document that purported to be a petition, but mistakenly filed an exhibit to the petition in its place.  Two days later, once Petitioner realized the mistake, it filed the Petition with a letter requesting that because the error was unintentional, the correct filing date should be the original filing date.  Patent Owner opposed the request to the extent that a motion had not been filed.  The Board noted that requests for relief should be filed as motions, and such motions generally require authorization from the Board before filing.  The Board then treated the letter as a request for authorization to file a motion to correct a clerical error. Continue reading

Order Dismissing Petitions CBM2014-00142, 147

Takeaway: The Board will more likely consider a late filing if the party that missed the deadline took immediate action to correct the late filing.

In its Order, the Board dismissed the Petitions in CBM2014-00142 (“the ’142 Petition”) and CBM2014-00147 (“the ’147 Petition”) for being filed late. Petitioner had filed three defective petitions and was given the opportunity by the Board to make appropriate corrections within five business days.  One corrected petition was timely filed, but the corrected ’142 Petition was filed 74 days late and the corrected ’147 Petition was filed 64 days late.  The Order dismissing petitions addressed each of these in turn. Continue reading

Order Regarding Petition Filing Date IPR2014-00367

Takeaway: In order to be accorded a filing date, a petition must include affidavits or declarations of supporting evidence and opinions as required by 35 U.S.C. § 312(a)(3)(B).

In its Order, the Board accorded the Petition a filing date of January 21, 2014. Also, the Board authorized Petitioner to file a motion requesting that the Petition be accorded an earlier filing date of January 18, 2014, and authorized Patent Owner to file an opposition to any such motion. Continue reading

Granting Request to File Exhibit IPR2014-00685

Takeaway:  A party will likely be granted leave to correct an error of not including an exhibit if it is clear from the papers or other exhibits that the missing exhibit was intended to be filed.

In its Order, the Board granted Petitioner’s request to correct a filing error.  Petitioner filed the declaration of its expert without including his curriculum vitae, despite indicating that it was attached.  Patent Owner opposed the request because it already filed its Preliminary Response, in which it challenged the declaration under Federal Rule of Evidence 702.  The Board found that Patent Owner could have asked Petitioner for a copy of the curriculum vitae because it was obvious from the declaration that Petitioner intended to submit it. Further, if inter partes review is instituted, Patent Owner will have the right to file a response in which it can address any perceived deficiencies of the declaration. Continue reading