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: If a due date that is stipulated by the parties falls on a federal holiday or weekend, the filing must be filed on that date, not on the next business day, in order to be timely.
In its Final Written Decision, the Board found that all of the challenged claims (1, 4-6, 8, 9, 11, 12, 38, 41-44, 46, 47, and 49) of the ’384 Patent are unpatentable. The ’384 Patent proposes to solve problems relating to current flux around tissue treated by electrosurgery and tissue heating. The Board began by construing the claims according to their broadest reasonable interpretation in light of the specification. The Board had provided constructions for various terms of the challenged claims in its Decision on Institution. Petitioner agreed with those constructions, but Patent Owner disagreed with the construction of the term “perforated.” Patent Owner argued that the phrase “to permit the release of steam during use” should be ignored in construing a limitation that includes the word “perforated” because it describes the function of the perforations. The Board disagreed. Patent Owner also argued that “perforations” do not include “passages,” but the Board found that Patent Owner had not explained adequately why a perforation excludes a passage. Continue reading
Takeaway: A different claim construction standard is applicable in the district court in determining infringement than the broadest reasonable interpretation standard applied by the Board in determining patentability.
In its Order, the Board refrained from authorizing Patent Owner to file a motion to compel routine discovery. The Board also indicated that Patent Owner was not authorized to file a motion to stay any of the referenced proceedings, or a motion to change or extend the due dates in the existing Scheduling Orders. Continue reading
Takeaway: A party may file a motion to submit supplemental information if the request for the authorization to file the motion is made within one month of the date for which trial has been instituted and the supplemental information is relevant to a claim to be considered during the trial.
In its Order, the Board authorized Petitioner to file a motion to submit supplemental information. As ordered by the Board, the motion must not exceed 5 pages in length, and the supplemental information that Petitioner seeks to have entered should be filed as an exhibit to the motion. The Board also authorized Patent Owner to file an opposition to Petitioner’s motion, with the opposition being limited to 5 pages as well. Continue reading
Takeaway: The AIA does not provide for “replacement” of a party to a proceeding. Therefore, if a patent owner assigns the challenged patent and stops participating in the proceeding, the Board may proceed directly to the final written decision without further input from the parties.
In its Order, the Board vacated Due Dates 2-7 of the Scheduling Order and determined that the case is ready for final decision following notice by Patent Owner’s counsel that Patent Owner assigned the challenged patent to a third party and would take no further action in the case, unless required by the Board. Continue reading
Takeaway: If the parties are requesting to modify due dates 3-7, they must show good cause for modification, which cannot be based upon speculation of future events.
In its Order, the Board denied-in-part and dismissed-in-part the parties’ Joint Motion to Modify Schedule. The parties requested to modify Due Dates 3-7 in the Revised Scheduling Order by six months to one year in view of a merger agreement between the parties that should close sometime in 2015 after FTC approval. The parties also requested an extension of time to complete the trial under 35 U.S.C. § 326(a)(11). The Board issued an Order requiring additional information from the parties, and a Response was submitted. In the Response, the parties stated that the FTC extended its initial waiting period for at least six month, pushing the closure of the merger for at least six months. Additionally, if the FTC does not approve the merger, then the FTC may file a lawsuit to keep the merger agreement from closing. Therefore, the parties may need an extension of multiple years. 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