Reply to Preliminary Response Authorized To Address Standing CBM2015-00168, 178


Takeaway: When the Patent Owner Preliminary Response raises an issue concerning standing of Petitioner, the Board may authorize Petitioner to file a Reply limited to addressing the standing issue.

In its Order, the Board authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response limited to addressing Petitioner’s interpretation of statutes and regulations related to the issue of standing. The Board also authorized Petitioner to file an additional briefing regarding the claim construction issue.

Petitioner requested a call to discuss additional briefing on certain issues and a procedural question regarding re-filing the Petition to address claim construction for claims 9-16 in the ’168 proceeding.

Petitioner requested additional briefing to address an issue of standing that was raised by Patent Owner in the Preliminary Response. Patent Owner objected to Petitioner’s request because, according to Patent Owner, Petitioner should have established standing in the Petition. The Board authorized Petitioner to file an additional brief limited to Petitioner’s contention that it has standing to file the instant proceeding. The Board also authorized Patent Owner to file a Sur-Reply. Both parties are limited to three pages and the facts of record.

Petitioner requested additional briefing regarding whether the reinstatement of the patent, after the filing of the Petition, impacts its position on claim construction. Patent Owner argued that Petitioner has taken a position on claim construction that is unaffected by the reinstatement of the patent. Nonetheless, the Board authorized Petitioner to provide a one page Reply addressing the impact, if any, that the reinstatement of the patent, post-Petition, would have on Petitioner’s claim construction position advocated in the instant Petition. Patent Owner was not authorized to file any response on this issue.

Next, Petitioner alleged that the Preliminary Response raised the issue of whether claims 9-16 in the ’168 proceeding recite means-plus function terms. Petitioner asserted that the claims do not recite mean-plus function terms. Petitioner requested to withdraw from consideration claims 9-16 in favor of filing a new Petition that addresses the alleged claim construction issues. Patent Owner objected to the proposed withdrawal because filing a new Petition would give an unfair advantage to Petitioner to pre-empt Patent Owner’s arguments made in the Preliminary Response. The Board denied Petitioner’s request to authorize the withdrawal of claims from CBM2015-00168.

Finally, Petitioner requested that the Board consider the same issues in the CBM2015-00178 proceeding. Given the overlap between the two cases, the Board agreed.

Paper 9: Conduct of the Proceedings
Dated: December 7, 2015
Patents: 6,526,426, 7,207,005
Before: Jeremy M. Plenzler, Miriam l. Quinn, and Jennifer Meyer Chagnon
Written by: Quinn