Denying Leave to File Motion to Strike CBM2013-00033, 34, 35, 44, 46

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Takeaway: Even though the issue of whether arguments exceed the proper scope of a reply are normally decided by the Board when preparing a final written decision, the Board may still enter interlocutory orders disposing of the issue.

In its Order, the Board denied Patent Owner’s request for authorization to file a motion to strike and allowed Patent Owner to file the certificate of corrections issued for the challenged patents. Patent Owner sought to strike arguments in Petitioner’s reply that Patent Owner contended were outside the proper scope of a reply.  Although the Board did not authorize the filing of a motion to strike, the Board nevertheless ordered that Petitioner’s arguments were indeed outside the proper scope of its reply.

The Board noted that a reply must only respond to arguments raised in the patent owner response, and the issue of whether a reply contains arguments or evidence outside the proper scope is left to the Board’s determination. Patent Owner raised four allegations regarding Petitioner’s Reply that were allegedly improper: (1) new argument that Patent Owner tacitly conceded the presence of several limitations in the prior art by cancelling claims; (2) arguing a new ground of unpatentability not raised in the Petition; (3) new evidence to support a printed publication date; and (4) new argument and testimony concerning the construction of claim terms.

First, Patent Owner argued that Petitioner raised a new argument that the cancellation of claims in Patent Owner’s Motion to Amend was a tacit concession that the claim limitations were found in the prior art. Petitioner responded that it could not have possibly presented that argument earlier because Patent Owner had not cancelled the claims when Petitioner filed its Petition.  The Board agreed with Patent Owner that the argument was not in reply to any arguments raised in the Patent Owner Response.

Second, Patent Owner argued that Petitioner raised a new ground of unpatentability, that of obviousness over the prior art reference Paul alone. Petitioner responded that its arguments were in response to Patent Owner’s position that Paul teaches away from the claimed features and were raised in the context of the instituted grounds of anticipation by Paul.  The Board stated that it would not enter a new ground of unpatentability, but that it would consider arguments relevant to the instituted grounds of anticipation by Paul and obviousness over Paul in combination with another reference.

Third, Patent Owner argued that Petitioner presented new arguments and evidence to support a printed publication date. The Board indicated that it would decide the issue when it prepares the final written decision.

Fourth, Patent Owner argued that Petitioner presented new arguments regarding claim construction. The Board again chose to leave this determination for when it prepares the final written decision.

Having already agreed with Patent Owner’s first two arguments, the Board ordered that those arguments were not proper. With respect to the last two arguments, the Board did not authorize Patent Owner to file a motion to strike and reminded Patent Owner that a motion to exclude evidence was also not proper.

Finally, the Board addressed Patent Owner’s request to file three certificates of correction that were issued after the Patent Owner Response was due. The certificates of correction concerned the priority claims of the patents for which the certificates were issued.  Petitioner did not object, and the Board authorized Patent Owner to file the certificates as an exhibit without any additional substantive arguments.

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046
Paper 32: Order on Conduct of the Proceeding

Dated: June 23, 2014

Patents 8,155,679; 8,457,670; 7,664,516; 8,452,646; 8,438,055

Before: Joni Y. Chang, Michael W. Kim, and Barbara A. Benoit
Written by: Benoit