Patent Owner Motion for Rehearing of Decision to Institute IPR2014-00279

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Takeaway: When multiple Petitioner companies each execute a power of attorney, it is sufficient for each such company to grant power to its own representative counsel without expressly granting power to any counsel representing any of the other Petitioner companies.

In its Order, the Board denied Patent Owner’s Motion for Rehearing. First, the Board found that the Motion for Rehearing was improper under 37 C.F.R. § 42.71(d).  Second, the Board found that the Motion for Rehearing was incorrect in asserting that the Petition did not comply with 37 C.F.R. §§ 42.8 and 42.10. Continue reading

Decision Regarding Standard for Claim Construction IPR2014-00200

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Takeaway: Claim terms of an unexpired patent are interpreted under the broadest reasonable interpretation (BRI) standard, where claim terms of an expired patent are construed using the so-called Phillips standard.

In its Order, the Board addressed the appropriate claim construction to be utilized in the instant proceeding, as well as a Motion for Pro Hac Vice admission.

The Board instituted inter partes review of claims 1-20 of the ’320 Patent on May 9, 2014.  The Board construed certain claim terms in its Decision to Institute using the “broadest reasonable interpretation” (BRI) standard.  The ’320 Patent then expired on July 1, 2014. Continue reading

Decision Denying Motion for Joinder IPR2014-00279

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Takeaways: Parties should only request relief in a motion in accordance with what the Board has authorized. Also, the filing of multiple infringement lawsuits weighs against joinder to alleviate a patent owner’s burden in defending multiple inter partes review proceedings.

In its Decision, the Board denied Patent Owner’s request to join the five subject proceedings. Patent Owner’s Motion for Joinder did not persuade the Board that joinder would alleviate any burden on Patent Owner in the five subject proceedings or would benefit the Board in conducting the proceedings. Continue reading

Order Addressing Motions to Seal and Expunge IPR2013-00358

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Takeaway: Parties with in-house counsel registered in the PRPS system may file confidential documents in PRPS as “Board Only.” Parties may consider providing the Board with redacted versions of confidential documents in case the confidential information is relied upon in a final written decision, but such requests may be premature if the Board has not yet determined what it would rely upon.

In its Order, the Board conditionally granted the parties’ motions to seal for the duration of the proceeding, granted Patent Owner’s motion to expunge, and denied Patent Owner’s request for authorization to file a motion to submit supplemental information. Continue reading

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

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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

Order Denying Motion for Admission Pro Hac Vice CBM2014-00119

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Takeaway: In order to establish the requisite familiarity with the subject matter of a proceeding in a motion for admission pro hac vice, one must provide specific information such as having read the patent or the petition, being familiar with the prosecution history of the patent, having a technological background or particular experience related to the technology covered by the patent, or having played a substantive role in any co-pending litigation.

In its Order, the Board denied without prejudice Patent Owner’s Unopposed Motion for Admission of Attorney Stephen E. Roth Pro Hac Vice.  The Board began by stating that it may recognize counsel pro hac vice during a proceeding upon a showing of good cause provided that the lead counsel is a registered practitioner.  The non-registered practitioner may appear pro hac vice “upon a showing that counsel is an experienced litigating attorney and has established familiarity with the subject matter at issue in the proceeding.” 37 C.F.R. § 42.10(c). Continue reading

Order Denying Motion to Stay Petitions IPR2013-00194, IPR2013-00195, CBM2013-00013

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Takeaway: The Board is unlikely to stay PTAB proceedings pending appeal of a district court’s finding of invalidity, particularly where the issues in the district court and in front of the Board are different.

In its Order, the Board denied Patent Owner’s request to stay two related inter partes review proceedings and a related covered business method review in light of a district court’s finding that all of the challenged patents were invalid as being indefinite.  In light of its ruling regarding the requested stay, the Board granted the parties’ previous request for oral hearing. Continue reading

Denying Motion for Pro Hac Vice Admission IPR2014-00382

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Takeaway: Non-registered counsel seeking pro hac vice admission should provide specific facts showing that the counsel has experience litigating patent cases and has familiarity with the specific subject matter at issue in this proceeding.

In its Order, the Board denied a Motion for Pro Hac Vice Admission of Scott M. Plamondon without prejudice to allow for filing a revised motion. The Board found the Motion was too vague on Mr. Plamondon’s experience litigating and familiarity with the subject matter at issue in this proceeding. Petitioner did not file an opposition. Continue reading

Order Denying Motion to Withdraw as Counsel IPR2013-00335

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Takeaway: If an attorney wishes to withdraw as counsel, he or she must provide specific evidence supporting such withdrawal and must request authorization to file a motion to withdraw.

In its Order, the Board denied the request of Mr. Michael Smith and Mr. Jeff Hunt, counsel for Patent Owner, to withdraw as counsel. Mr. Smith explained that he and Mr. Hunt cannot continue “in good conscience” to represent Patent Owner because they disagree with Patent Owner’s legal strategy and cannot implement that strategy “going forward” in this trial. Continue reading

Dismissing Motion to Withdraw as Counsel IPR2014-00117, 18, 19

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Takeaway: To withdraw as counsel, the client should either have alternative counsel enter an appearance or the withdrawing counsel should represent in the Motion to Withdraw that the possibility of not having representation has been discussed with the client.

In its Order, the Board dismissed without prejudice counsel for Thought, Inc.’s Motion to Withdraw as Counsel. Current counsel stated in its Motion that Thought had retained alternative counsel, however, to date, no other counsel had appeared on behalf of Thought. Current counsel agreed to confer with Thought regarding its legal representation and will inform Thought that if he files another motion seeking withdrawal, Thought could be without representation. The Board indicated that if current counsel files a new motion to withdraw, it must indicate that counsel has discussed these issues with Thought or made a good faith effort to have such discussion. Continue reading