Reply to Preliminary Response Authorized To Address Standing CBM2015-00168, 178

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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

Denying Request to File Motion to Expunge Where Issue Could be Addressed in Sur-Reply IPR2015-00035

Takeaway: A motion to expunge a new patentability challenge raised for the first time in the petitioner’s reply is unnecessary where the patent owner can indicate its position in its sur-reply and the Board can review the pertinent materials without the aid of a motion to expunge.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to expunge. The Board further denied Patent Owner’s request for additional pages for its sur-reply. Continue reading

Order re Oral Hearing IPR2014-00041, 43, 51, 54, 55

Takeaway: The Board may postpone the date of the oral hearing to decide motions to seal to determine which documents are part of the public record.

In its Order, the Board postponed the date for the oral hearing in the proceedings and authorized Petitioner’s request to file a Sur-reply in response to Patent Owner’s Reply in support of Patent Owner’s Motion relating to real parties-in-interest. Continue reading

Denying Institution IPR2014-00806

Takeaway: A complaint alleging infringement in a first action that is dismissed without prejudice may still act as a time-bar under Section 315(b) if a second action involving the same challenged patent and the same parties is ongoing when the first action is dismissed.

In its Decision, the Board denied institution of inter partes review of the ’000 patent because Petitioner was time-barred under 35 U.S.C. § 315(b).  The Board rendered its Decision after allowing Petitioner to file a Reply in response to Patent Owner’s Preliminary Response and Patent Owner to file a Sur-Reply addressing the time bar. Continue reading

Decision Regarding Request for Sur-Reply IPR2013-00578

Takeaway: The Board allowed Patent Owner to use a portion of its Reply to the Opposition to the Motion to Amend to address arguments made by Petitioner in its Reply to the Patent Owner Response regarding swearing behind of one of the references, because the argument applies to both the Motion to Amend and the original claims.

In its Order, the Board summarized a call regarding Patent Owner’s request for a sur-reply brief regarding the issue of the date of invention of one of the references relied on in the Petition. With its Patent Owner Response, Patent Owner included a declaration from the inventor of the ’804 Patent, “swearing behind” one of the references relied on in the Petition. Continue reading

Authorizing Sur-Reply and Motion for Observation of Cross-Examination IPR2013-00580

Takeaway: Consistent with 37 C.F.R. § 42.53, testimony generally may be taken at any reasonable time and location within the United States.

In its Order, the Board authorized Patent Owner to file a sur-reply to Petitioner’s Reply to Patent Owner Response, but did not authorize Petitioner to file any response to the sur-reply. Also, the Board authorized Patent Owner to file a motion for observations on cross-examination of Mr. Lance Rake, and Petitioner was authorized to file responses to the observations. Continue reading

Authorizing Reply and Sur-Reply CBM2014-00116

Takeaway: The Board authorized a reply and sur-reply limited to responding to Patent Owner’s arguments based on the Supreme Court’s Alice decision made in the Patent Owner Preliminary Response, because the Alice decision was issued after the Petition was filed.

In its Order, the Board authorized a reply by Petitioner to the Patent Owner Preliminary Response limited to responding to Patent Owner’s arguments, based on the Alice decision, with respect to Petitioner’s asserted grounds of unpatentability. Patent Owner was also authorized a sur-reply. The Board authorized the reply, because in this case the Supreme Court’s Alice decision was issued after the Petition was filed, but before the Patent Owner Preliminary Response, such that Patent Owner was able to address the Alice decision and Petitioner was not. Continue reading

Expunging Unauthorized Sur-Reply IPR2013-00452

Takeaway: The Board may expunge papers filed without its authorization.

In its Order, the Board expunged Patent Owner’s unauthorized paper, which responded to Petitioner’s Reply to the Patent Owner Response. Patent Owner filed the paper to argue that Petitioner’s alleged prior art documents, which contained copyright notices, did not constitute prior art. Continue reading

Granting Motion for Leave to File a Sur-Reply CBM2013-00020; CBM2013-00023

Takeaway: A patent owner may be allowed to file a sur-reply with additional declaration evidence in response to a position that was fully developed in petitioner’s reply, but generally raised in the original petition.

In its Decision, the Board granted Patent Owner the opportunity to file a sur-reply. The sur-reply is limited to responding to the arguments made by Petitioner in its papers and at the hearing that the challenged claims would have been obvious over the CompuSonics publications. Patent Owner may, if necessary, submit new declaration testimony with its sur-reply. Should Patent Owner do so, Petitioner is authorized to cross-examine the witness(es) and file a motion for observation on cross-examination to alert the Board to any relevant testimony. Continue reading