In its Order, the Board confirmed that it will use the Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1327 (Fed. Cir. 2005), claim construction standard to review the claims of the ’005 Patent. The Board previously asked the parties to file a joint paper indicating both the date of expiration of the ’005 Patent and whether they agree that the rule of broadest reasonable interpretation does not apply at the time of the final written decision if the ’005 Patent expires before that time. The parties filed a Stipulation indicating that the ’005 Patent will expire on November 4, 2014, and that the parties agree that the rule of broadest reasonable interpretation will not apply. The Board noted that the oral hearing is scheduled for January 9, 2015, therefore, it is highly likely that the final written decision will issue after the expiration of the ’005 Patent. Therefore, the Phillips standard will apply because the expired claims are not subject to amendment. The Board noted that there will still be no presumption of validity, Petitioner’s burden of proof is by a preponderance of the evidence, and the Board will not apply a rule of construction with an aim to preserve the validity of the claims. Additionally, the Board reviewed its analysis in the Decision to Institute, and found that the application of the Phillips standard does not change its construction of the terms construed in the Decision. Continue reading
Monthly Archives: June 2014
Granting Leave to File Revised Motion for Observations IPR2013-00323
Takeaway: A motion for observations is typically limited to 15 pages, and should include a single short paragraph for each observation with an explanation of relevance that is not elaborate or argumentative.
In its Order, the Board authorized Patent Owner to file a revised motion for observations on cross-examination of Petitioner’s Reply declarant. Petitioner did not oppose this authorization. At the same time, the Board authorized Petitioner to file a response to Patent Owner’s motion for observations. Continue reading
Decision Denying Institution IPR2014-00243
In its Decision, the Board denied institution of inter partes review for each of challenged claims 1-28 (i.e., independent claims 1, 2, and 17 and dependent claims 3-16 and 18-28) of the ’992 patent. This Decision was preceded by the filing of the original Petition and a Patent Owner Response. The ’992 patent relates to “a method for electrolytically plating copper onto a substrate having submicron-sized interconnect features using a source of copper ions and suppressor compound having polyether groups.” Continue reading
Order Addressing Motions to Seal and Expunge IPR2013-00358
In its Order, the Board conditionally granted the parties’ motions to seal for the duration of the proceeding, granted Patent Owner’s motion to expunge, and denied Patent Owner’s request for authorization to file a motion to submit supplemental information. Continue reading
Denying Motion to Modify Oral Hearing Date IPR2013-00401, 00404
In its Order, the Board denied Patent Owner’s request to reschedule the oral argument from the date set in the Scheduling Order dated December 19, 2013. Patent Owner requested a change in the hearing date because its lead and backup counsel had a conflicting trial in an unrelated district court litigation. However, the Board stated that its hearing room schedule and the schedule of the panel are not amenable to rescheduling the hearing at this late a date (less than a month prior to the hearing). Further, the proceeding is conducted on a strict statutory timeline and cannot deviate without risking to meet that timeline; therefore, the moving party must show good cause for moving the hearing date. The Board noted that Patent Owner provided no explanation for its request other than stating its counsel has a conflicting trial date. Specifically, Patent Owner did not explain what efforts it undertook with the district court to schedule around the hearing date and did not state that Petitioner joined its request. The Board allowed for Patent Owner to request a conference call with the Board to seek authorization to file a motion to change the hearing date if it believes there is good cause, but cautioned that even if a motion is authorized, it will not be granted without a showing that Patent Owner is entitled to the requested relief. Continue reading
Order That Corrected Petition Was Non-Compliant IPR2014-00796
In its Order, the Board concluded that Petitioner’s corrected Petition was non-compliant, and ordered Petitioner to file a second corrected Petition by a specified date. The original Petition was filed on May 21, 2014. The Board issued a Notice of Filing Date Accorded on May 29, 2014, requiring Petitioner to file a corrected Petition incorporating proper line spacing and not having any attorney argument in the claim charts. Petitioner filed the corrected Petition on Jun 5, 2014. Continue reading
Order Regarding Joinder, Additional Discovery, and Observations on Cross-Examination IPR2014-00199
In its Order, the Board addressed several issues: (i) it denied Petitioner’s request to file a motion to join another inter partes review (IPR2014-00920) to the current proceedings; (ii) it granted Patent Owner’s request for authorization to file a motion for additional discovery regarding potential real-parties-in-interest; (iii) it provided guidance for Patent Owner’s anticipated motion to amend claims; (iv) it invited Patent Owner to seek authorization to file a motion for observations on cross-examination when that authorization would be timely; and (v) it reminded both parties of the rules governing motions to exclude. Continue reading
Expunging Demonstrative Exhibits IPR2013-00203
In its Order, the Board expunged Patent Owner’s demonstrative exhibits. Petitioner filed objections to certain Patent Owner demonstratives. Patent Owner stated that most of the demonstratives were duplicates of documents already in the record because it was unsure which materials it would be permitted to reference during oral argument, and that it may not rely on every page of the demonstratives. Continue reading
Decision Denying Institution and Motion for Joinder IPR2014-00271
In this Decision, the Board addressed a Corrected Petition that Petitioner had filed challenging the patentability of claims 1, 3-5, 7-13, 17-28, 30-33, 35-37, 40-43, and 46-50 of the ’403 patent, which relates to a graphical user interface. The Board also considered a motion that Petitioner had filed seeking joinder with IPR2013-00292 also involving the ’403 patent. Continue reading
Decision Denying Request for Rehearing of Denial of Inter Partes Review IPR2014-00218
In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s earlier Decision denying inter partes review of claims 9 and 12-14 of the ‘565 patent. The Board had already granted institution with respect to claims 1, 5-8, 10, and 11. Continue reading