Motion to Terminate Denied IPR2015-00739

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Takeaway: The statutory requirements under 35 U.S.C. § 312(a) for consideration of a petition are not jurisdictional. Therefore, the Board can allow a petitioner to rectify a lapse in compliance without terminating the proceedings.

In its Decision, the Board denied Patent Owner’s Motion to Terminate the Proceeding based upon lack of jurisdiction of the Board to institute inter partes review.

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Granting Rehearing of Decision on Institution Allowing Issue Joinder IPR2015-00762

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

Denying Motion to Dismiss Petition IPR2015-00519

Takeaway: Under the Board’s rules governing inter partes proceedings, the petition and supporting papers must be served on the patent owner at the current correspondence address of record for the subject patent. If the papers are timely served on patent owner’s litigation counsel instead, the Board may—but is not required to—waive the requirement where the patent owner’s ability to respond to the petition is not “affected meaningfully.”

In its Decision, the Board denied “Patent Owner’s Motion To Deny The Petition A Filing Date For Failure To Serve The Patent Owner At The Correspondence Address Of Record And To Dismiss The Petition For Failure To File The Petition Within One Year After Service Of A Complaint For Patent Infringement.” Continue reading

Order Regarding Institution of Inter Partes Review IPR2015-00065

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

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

Granting Motion to Deem Response Timely Filed IPR2014-00148

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

Granting Motion for Leave to File Motion for Extension of Time IPR2014-00148

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

Decision Denying Institution IPR2014-00489

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

Denying Institution of Inter Partes Review IPR2014-00384

Takeaway: The Board denied institution of inter partes review for reasons of administrative efficiency where the Petition presented at least 127 different grounds of unpatentability and failed to fully develop any of the grounds.

In its Decision, the Board denied institution of an inter partes review of the ’269 Patent. The ’269 Patent relates to methods of synthesizing nondestructive examination data to be used for training data analysts and/or testing inspective techniques. Continue reading

Expunging Unauthorized Motion to Exclude and Reply to Preliminary Response IPR2014-00439

Takeaway: Although the Board’s rules preauthorize parties to file motions to exclude after the discovery period concludes, the Board may expunge unauthorized motions to exclude filed during the discovery period.

In its Order, the Board expunged Petitioner’s Motion to Exclude and its Reply to Patent Owner’s Preliminary Response because Petitioner failed to obtain the Board’s authorization to file either paper. Continue reading