Takeaway: The bar under 35 U.S.C. § 325(a)(1) is a statutory requirement and, thus, cannot be waived.
In its Decision, the Board ordered the termination of the trials in CBM2014-00072, CBM2014-00073, CBM2014-00074, and CBM2014-00075, and vacated its Decisions on Institution in each of these proceedings, because it found that Petitioner had filed a declaratory judgment action that resulted in a bar under 35 U.S.C. § 325(a)(1). Continue reading
Takeaway: Whether a petition is time-barred under 35 U.S.C. § 315(b) or fails to identify all real parties-in-interest under 35 U.S.C. § 312(a)(2) are fact-dependent inquiries that may or may not be dispositive of a case depending on the circumstances.
In its Decision, the Board addressed issues of service under 35 U.S.C. § 315(b) and real party-in-interest under 35 U.S.C. § 312(a)(2) within the context of a complex fact pattern involving eighteen separate petitions for inter partes review. This Decision focuses on thirteen of the proceedings resulting from these eighteen petitions. Continue reading
Takeaway: Many decisions on what evidence the Board will consider will be provided when preparing its final written decision. Thus, a party should be careful to ensure all evidence is provided properly, because there will likely be no opportunity to fix any errors.
In its Order, the Board denied Patent Owner’s motion to dismiss without prejudice the Petitioner’s replies in both proceedings. Patent Owner argued that the replies should be dismissed for the following reasons: (1) improper incorporation by reference under 37 C.F.R. § 42.6(1)(3); (2) exceeding the scope of the reply under 37 C.F.R. § 42.23(b); and (3) exceeding the scope of prior art available in an IPR under 35 U.S.C. § 311. Continue reading
In its Order, the Board denied Petitioner’s request to dismiss Patent Owner’s Motion to Amend with prejudice. Petitioner argued that the Motion to Amend should be dismissed because it was filed late, Patent Owner did not properly “confer” with the Board regarding the extensive claim amendment, and the Motion contained alleged substantive deficiencies, such as treating the prior art insufficiently and incorporating improperly by reference arguments from a declaration. The Board stated that late action will be excused either upon a showing of good cause or a Board decision that consideration on the merits would be in the interest of justice. The Board stated that based upon the facts presented, the late filing would be excused. The Board also disagreed that Patent Owner did not confer with the Board, citing to its December 20, 2013 Order. Finally, the Board noted that arguments incorporated by reference from one document into another may be overlooked, but Petitioner can address these deficiencies in its Opposition to the Motion to Amend. The Board also allowed Patent Owner to file exhibits referenced in the declaration and provide correct citations to the declaration in the Patent Owner Response. Continue reading