Category Archives: Scheduling Order

Authorizing Motion for Additional Discovery IPR2014-0097; CBM2013-00049

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Takeaway: Parties seeking additional discovery of materials should first attempt to obtain the information from other sources before filing motions for additional discovery, particularly where the materials may have been produced in a related litigation.

In its Order, the Board addressed the initial conference call, which was held for the IPR proceedings, IPR2014-00097 and IPR2014-00098. Also addressed during the call were the related CBM proceedings, CBM2013-00049, CBM2013-00050, and CBM2013-00051.

The Board first addressed the proposed scheduling changes in both the IPR and CBM proceedings. The Board granted the parties’ joint request to extend due dates in the IPR proceedings to account for holiday schedules.  The Board also granted Petitioner’s request to extend the schedule in the CBM proceedings “for a limited period of time” to address the recent U.S. Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, __ U.S. __, No. 13-298, slip op. (U.S. June 19, 2014). Continue reading →

Order Regarding Proposed Challenge to Scope of Reply IPR2013-00368, 371, 372

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Takeaway: The Board may decline to rule on the propriety of Petitioner’s Reply until it issues its final written decision, at which point the Board may ignore the entirety of the Reply if any part of it exceeds its proper scope.

In its Order, the Board addressed multiple issues: it denied Patent Owner’s request to file a paper summarizing the allegedly improper scope Petitioner’s Reply; it granted Petitioner’s unopposed request to file Exhibit 1025 for the two out of three cases (IPR2013-00368 and IPR2013-00371) associated with the instant proceeding in which that exhibit had not yet been filed; and it authorized the parties to stipulate to extended deadlines for Due Dates 4 and 5. Continue reading →

Denial of Leave to File a Motion to Stay Prosecution of Co-Pending Application IPR2014-00115

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Takeaway: The Board is not statutorily authorized to take jurisdiction over pending patent applications that are related to the patent challenged in the proceeding.

In its Order, the Board summarized the initial conference call, which was held on May 22, 2014, and denied authorization for Petitioner to file a motion to stay prosecution of a co-pending patent application.

With respect to the motion to stay, citing EMC Corp. v. Personal Web Technologies, LLC., IPR2013-00083 (PTAB) (Paper 12), the Board stated that while the Board may stay a reexamination proceeding pursuant to 35 U.S.C. § 315(d) “where the involved patent is the subject of reexamination proceeding, there is nothing in the statute that extends that authority to allow the Board to take jurisdiction over related applications.”  Thus, the Board did not authorize Petitioner to file a motion to stay prosecution of co-pending application 13/011,164. Continue reading →

Order Denying Request to Adjust Scheduling Order IPR2013-00505,509

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Takeaway: The Board will likely not alter a scheduling order in a manner that would impair its ability to issue a final decision within one year of institution, as required by statute, despite any difficulties the parties may have in conducting discovery or any agreements they may reach regarding the scheduling order.

In its Order, the Board denied the parties’ Joint Motion to Adjust the Scheduling Order. The parties requested that the Scheduling Order be adjusted to allow for a single deposition rather than multiple depositions in the proceedings.  However, the proposed schedule would have moved Due Date 7 by six weeks.  The parties argued that the proposed schedule would still allow for a final written decision within one year from institution if proceedings are not instituted in IPR2014-00506 or IPR2014-00507, or if those two proceedings are not joined with the instant proceedings. Continue reading →