Takeaway: Settlement negotiations may not provide sufficient cause to extend time for filing the preliminary response in light of the fact that the filing of a preliminary response is optional and a patent owner may waive such a filing if doing so would facilitate settlement.
In its Order, the Board denied the parties’ stipulated motion to extend time for Patent Owner’s preliminary response to the Petition. Patent Owner had emailed the Board on behalf of both parties “seeking a two-month extension of the filing deadline for Patent Owner’s preliminary response, in light of ongoing settlement negotiations.” The parties further agreed “to expedite the proceedings if inter partes review is instituted.” Continue reading
Takeaway: When the Patent Owner Preliminary Response raises an issue concerning standing of Petitioner, the Board may authorize Petitioner to file a Reply limited to addressing the standing issue.
In its Order, the Board authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response limited to addressing Petitioner’s interpretation of statutes and regulations related to the issue of standing. The Board also authorized Petitioner to file an additional briefing regarding the claim construction issue. Continue reading
Takeaway: In order to present testimonial evidence with its preliminary response, the patent owner must show that it would be in the interests of justice and overcome the fact that petitioner would not have an opportunity to cross examine the declarant.
In its Order, the Board denied Patent Owner’s request to file new testimonial evidence under 37 C.F.R. § 42.107(c). The parties had a conference call with the Board to discuss Patent Owner’s request to submit the testimonial evidence. Pursuant to 37 C.F.R. § 42.107(c), a patent owner’s preliminary response “shall not present new testimony evidence beyond that already of record, except as authorized by the Board.” Generally, a patent owner submits testimonial evidence in its response after institution. Continue reading
Takeaway: In a case where the Patent Owner has filed neither a Preliminary Response nor a Patent Owner Response, the Board will base its Final Written Decision on the information of record, including the submitted testimonial evidence and the positions advocated by Petitioner.
In its Final Written Decision, the Board concluded that Petitioner had shown by a preponderance of the evidence that all claims of the ’429 patent for which trial was instituted are unpatentable. The claims for which trial had been instituted were claims 15–21, 23–26, 29–32, 34, 36, 37, 39, 41–50, 52–58, 60, 62–67, and 70–76. Continue reading
Takeaway: A party claiming to have all substantial rights to a challenged patent must set forth evidence to support its assertion for the Board to consider papers filed by the party.
In its Order, the Board ordered that the Preliminary Response filed by Fluidigm will be expunged unless within five business days of the Board’s Order, a paper is filed “that shows cause why Fluidigm should be entitled to file a preliminary response to the Petitions.” Continue reading
Takeaway: The Board has the authority to expedite a preliminary response under 37 C.F.R. § 42.5(c)(1).
In its Order, the Board granted Petitioner’s request to expedite Patent Owner’s Preliminary Response. Also, the Board authorized Petitioner to submit a reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder in the event that Patent Owner elects to file an opposition to the Motion for Joinder. Continue reading
Takeaway: The Board will expunge from the record and will not consider with a Preliminary Response any new testimony that is taken specifically for the proceeding at issue.
In its Order, the Board ruled on Petitioner’s request that the Board expunge certain exhibits from the record and strike any corresponding argument in Patent Owner’s Preliminary Response. According to Petitioner, the exhibits and Preliminary Response included new testimonial evidence in violation of 37 C.F.R. 42.207(c). Continue reading
Takeaway: There is no per se rule that a petitioner must demonstrate how a petition is not redundant to any prior art and argument previously presented to the Office under 35 U.S.C. § 325(d). Instead, the Board has discretion under this statute to consider whether the same or substantially the same prior art or arguments were previously presented to the Office.
In its Decision, the Board concluded that Petitioner had persuasively demonstrated a reasonable likelihood of showing that claims 6 and 33 of the ’565 patent, which relates to rearview vision systems for vehicles that provide the vehicle operator with scenic information in the direction rearward of the vehicle, are unpatentable. Thus, the Board instituted trial with respect to these claims. The Board was not similarly persuaded as to challenged claims 14, 21-24, 34-38, 43-46, and 49, and therefore did not institute trial with respect to these challenged claims. Continue reading