In its Decision, the Board authorized Petitioner to file a non-argumentative claim chart showing where written description support for the claims of a cited prior art reference could be found in a related provisional patent application and authorized Patent Owner to file a response to Petitioner’s claim chart.
Category Archives: Additional Pages
Decision Granting Petitioner Page Extension IPR2014-00781
In its Decision, the Board granted Petitioner’s request for an additional ten pages for its Reply to Patent Owner’s Response.
The Board noted that Petitioner’s request is consistent with USPTO Director Lee’s Posting on March 27, 2015. Continue reading
Decision Regarding Request for Sur-Reply IPR2013-00578
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
Order Regarding Page Limit Violations IPR2014-00041; IPR2014-00043; IPR2014-00051; IPR2014-00054; IPR2014-00055
In its Order, the Board summarized the results of a conference call held on September 3, 2014. The Board previously authorized the parties to file briefing regarding whether Petitioner identified all real-parties-in-interest and what relief should be granted if Petitioner did not. Each party’s brief was limited to 15 pages. Patent Owner pointed out that that Petitioner had included Appendix A attached to Petitioner’s 15-page brief, and that the Appendix included Petitioner’s responses to Patent Owner’s Statement of Facts. The Board agreed and authorized Petitioner to refile its brief by the close of business September 4, to comply with the 15 page limit. Continue reading
Denying Request for Additional Pages CBM2013-00052, 53, 54
In its Order, the Board declined Petitioner’s request for authorization to file a motion for waiver with respect to page limits set for Petitioner’s Replies to Patent Owner’s Responses. The proposed motion for waiver was pursuant to 37 C.F.R. § 42.5(b) in regard to the page limits set by 37 C.F.R. § 42.24(c)(1). Continue reading
Denying Motion for Additional Pages for Petitioner Reply IPR2013-00517
In its Order, the Board denied Petitioner’s request for authorization to file additional pages with its Reply. Petitioner requested additional pages for its Reply, because Patent Owner’s Response was accompanied by 110 exhibits and Petitioner was concerned that Patent Owner had effectively circumvented the rule limiting the number of pages for the Response. The Board determined that Petitioner had not presented a sufficient reason to supports its request for extra pages for its Reply. Further, the Board stated that “[t]o the extent that [Patent Owner] included arguments or evidence in the 110 exhibits that are not also supported by its Patent Owner Response, those arguments and evidence will not be considered when we prepare our final decision.” Continue reading
Decision on Waiver of Argument and Denying Request for Additional Pages in Reply CBM2013-00033; CBM2013-00034; CBM2013-00035; CBM2013-00044; CBM2013-00046
In its Order, the Board addressed three separate issues. First, the Board ordered that Patent Owner did not constitute waiver of its argument that a reference is not a “printed publication.” Second, the Board denied Petitioner’s request for three additional pages for its Reply. Third, the Board denied Patent Owner’s contingent request for leave to file motion to submit supplemental information. Continue reading