In its Order, the Board summarized the initial conference call in the proceeding and set forth its understanding of the applicable claim construction standard.
First the Board, in commenting on Petitioner’s reservation of the right to seek authorization from the Board in its list of proposed motions, instructed the parties that a filing to reserve a party’s rights is not helpful and should be avoided. The Board then addressed the only motion listed by Petitioner in its motions list, that of moving the date of the oral hearing, by selecting a date that was agreeable to all parties.
Next, the Board addressed Patent Owner’s request for authorization to file a motion for the Board to require mandatory initial disclosures. The Board noted that mandatory initial disclosures are mandatory without the need for filing a motion. The parties were instructed to discuss what disclosures Patent Owner believes should be forthcoming.
Then, the Board raised the issue of the challenged patent’s expiration date. The Board noted its understanding that the patent was set to expire prior to the date of any final decision in the proceeding. The Board then asked the parties to file a joint paper within ten days of the Order setting forth their understanding of the expiration date of the challenged patent.
The Board explained that the standard of claim construction for unexpired patents is the broadest reasonable interpretation, but for patents that will expire prior to a final decision, the standard employed by district courts applies. While the proceeding was instituted based on the broadest reasonable interpretation standard, the Board noted its view that the construction to be applied in the final decision would be that of the district courts. The Board also noted that there would be no presumption of validity, the burden of proof is still by a preponderance of the evidence, and the construction would not be conducted with an aim to preserve validity, unlike in the district courts.
The Board also expressed its view, while not an official determination, that the claim constructions would be the same regardless which standard applies. After the parties argue their positions on the matter in the Patent Owner Response and Petitioner’s Reply, the Board indicated that it would issue an updated claim construction “which indicates the construction that is not according to the broadest reasonable interpretation rule.”
Finally, the Board denied Patent Owner’s request for authorization to file an opposition to Petitioner’s Request for Rehearing of the Decision on Institution. The Board indicated that if any input from Patent Owner is desired, the Board will notify the parties. Also, the Board stated that the Request for Rehearing will not be granted without providing Patent Owner with an opportunity to respond.
Square, Inc. v. J. Carl Cooper, IPR2014-00156
Paper 13: Order on Conduct of the Proceedings
Dated: June 4, 2014
Patent: 6,764,005
Before: Jameson Lee, George R. Hoskins, and Kristina M. Kalan
Written by: Lee