Denying Motion for Reconsideration of Denial of Motion for Leave to File First Amended Response IPR2013-00335

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Takeaway: Motions that do not “move the ball forward,” but which instead are likely to add cost and unnecessarily extend the proceeding, are not likely to be granted.

The Board had previously issued Orders denying Patent Owner’s Motion for Leave to File a First Revised Patent Owner’s Response to Decision to Institute Trial for Inter Partes Review.  Patent Owner then filed Motion for Reconsideration of Patent Owner’s Motion for Leave to File Patent Owner’s First Amended Response to Decision to Institute Trial for Inter Partes Review (“Request for Reconsideration”).

In its Order, The Board denied the Patent Owner’s Request for Reconsideration because it was misplaced in several respects.  For example, a party does not have to concede that leave is required to amend a Patent Owner Response after the due date for filing a Patent Owner Response.  Instead, there is simply no right to amend a Patent Owner Response after its due date.  Also, 37 C.F.R. §§ 42.5, 42.25 recite expressly that papers not otherwise provided for require Board authorization.

Mobotix Corp. v. E-Watch, Inc., IPR 2013-00335
Paper 10: Order Denying Patent Owner’s Motion for Reconsideration of Patent Owner’s Motion for Leave to File Patent Owner’s First Amended Response to Decision to Institute Trial for Inter Partes Review
Dated: April 16, 2014
Patent 7,228,429
Before: Jameson Lee, Michael W. Kim, and Matthew R. Clements
Written by: Kim