In its Decision, the Board denied Patent Owner’s and Petitioner’s requests to expunge a declaration submitted with Patent Owner’s Response and also denied Patent Owner’s request to submit substitute a Corrected Patent Owner’s Response and Amended Declaration.
Category Archives: Amended Response
Denying Request to File Corrected Patent Owner Response Removing Citations to Expunged Exhibit CBM2014-00133, 135
In its Order, the Board granted Patent Owner’s request to expunge an exhibit and denied Petitioner’s request that Patent Owner be ordered to file a corrected Patent Owner Response. Continue reading
Denying Leave to File Second or Corrected Motion to Amend IPR2013-00417
In its Order, the Board (1) denied Patent Owner’s request to address the disclosure of five intermediate applications in the continuity chain of the ’788 Patent, (2) denied Patent Owner’s request to file a second Motion to Amend, and (3) authorized Patent Owner to file as supplemental evidence 12 copies of the Fry reference. Continue reading
Denying Motion for Reconsideration of Denial of Motion for Leave to File First Amended Response IPR2013-00335
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
Denying Request to File Amended Response IPR2013-00334
In its Order, the Board denied Patent Owner’s request for authorization to file a Motion for Leave to file an amended Response. Patent Owner requested a number of emergency extensions for the Patent Owner Response, and was ultimately granted 10 days. Then, over a month and a half after filing the Patent Owner Response, Patent Owner filed a Revised Patent Owner Response without any notification to the Board. The Board expunged the unauthorized entry. Patent Owner then requested a telephone call with the Board, and alleged that Patent Owner previously had insufficient funds to retain a technical expert in support of their positions in this and six other trials. The Board told the Patent Owner that had earlier requests for relief been raised, the Board may have been able to provide possible relief where warranted, but after the fact no relief would be granted. Continue reading
Denying Request for Authorization to File Motions for Leave, Stay, and Amendment of Schedule IPR2013-00335
In its Order, the Board denied Patent Owner’s request for authorization to file: (1) motion for leave to file a first revised patent owner’s response to decision to institute trial for IPR; (2) motion for amendment of schedule; and (3) motion to stay proceedings. Continue reading