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.
Patent Owner then requested a conference call with the Board which was held on June 10, 2014. During the conference call, Patent Owner asserted that there were significant differences between the original Petition and corrected Petition which substantively changed the nature of Petitioner’s arguments. For example, the claim chart in the corrected Petition stated that “[a] viscous fluid or gel would be adhesive to some degree.” But the original Petition instead stated that “[a] viscous fluid or gel would inherently, or at least obviously, be adhesive to some degree.”
Although Petitioner argued that support for its original argument could be found at various locations in the corrected Petition, the Board agreed with Patent Owner that at least the above-noted change was of a substantive nature. Moreover, the Board concluded that the claim charts of the corrected Petition continued to include attorney argument. Consequently, the Board found the corrected Petition to be non-compliant, and gave Petitioner a final opportunity to submit a compliant petition, in the form of a second corrected petition, by June 18, 2014.
CAO Group Inc. v. The Procter & Gamble Company, IPR2014-00796
Paper 11: Order on Conduct of the Proceeding
Dated: June 17, 2014
Patent: 5,989,569
Before: Erica A. Franklin, Donna M. Praiss, and Scott E. Kamholz
Written by: Kamholz