Takeaway: Majority opinion of enlarged panel determined that the Board has discretion to grant a motion for joinder of two petitions by the same party that includes the same ground of unpatentability, at least where the second petition is fixing a procedural error in the first petition.
In its Decision, the Board granted Petitioners’ Request for Rehearing of the Board’s decision not to institute inter partes review of the ‘349 patent. In granting the rehearing, the Board also reversed its previous decision on institution and instituted the challenge to claims 1-3, 8, 9, 12, 16, and 19 as anticipated by Hideji, and joined this proceeding with IPR2014-01121. Continue reading
Takeaway: A decision to institute an IPR is not a “final written decision” that estops a Petitioner from seeking IPR on additional grounds.
The Board held a conference call to discuss scheduling in this IPR and two related IPRs. In this IPR, by agreement of the parties, Patent Owner is submitting its preliminary response in two parts. Patent Owner submitted the first part a few days before the conference call. In its Order, the Board addressed several arguments raised by Patent Owner in the first part of the preliminary response. Continue reading
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
Takeaway: A late filing may be excused either on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.
In its Decision, the Board granted Patent Owner’s Motion to Deem the Response Timely Filed. At the same time, the Board extended Due Date 2 by a day. Due Dates 3-7 remain as originally scheduled.
Patent Owner’s Response to the Petition had been due on August 18, 2014. The person handling the filing for Patent Owner began filing the Response at 11:45 p.m. on that day. However, due to “technical difficulties” relating to the USPTO Patent Review Processing System (PRPS), the person handling the filing was unable to complete the filing until 12:31 a.m. on August 19, 2014. In other words, the Response was filed 31 minutes late. Continue reading
Takeaway: If opposing a motion to deem a late filing as timely, the opposing party should focus on any actual prejudice caused by the delay given the fact that the parties are able to stipulate extensions in time for due dates 1-5.
In its Order, the Board authorized Patent Owner to file a motion to deem the late filing of the Patent Owner Response as timely. The parties had previously stipulated that the Patent Owner’s Response was due by August 18, 2014, and Patent Owner submitted the Response on August 19, 2104. The parties therefore sought guidance on addressing the timeliness of the Response. Continue reading
Takeaway: A petition that cites to a declaration, which in turn cites to prior art references, may be considered to have improperly incorporated arguments by reference where the prior art citations and the associated analysis are not set forth in the petition.
In its Decision, the Board denied institution of an inter partes review, finding that Petitioner had not established a reasonable likelihood of prevailing with respect to any challenged claim of the ’988 patent. The ’988 patent describes “a system for remote data acquisition and centralized processing and storage of the acquired data,” and “is said to improve upon the prior art by providing an automated, reliable, secure system to process electronic and paper transactions.” Continue reading