Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 10
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Activity at PTAB
· PTAB Trial Section Judges
As of this writing, the PTAB has instituted or terminated 171 of the 432 listed proceedings; 261 petitions await decision.
The PTAB has refused to institute 14 proceedings, the three most recent denials occurring in July, Research in Motion Corp. v. WI-LAN, Inc. IPR2013-00125, petition denied, July 29, 2013, Heart Failure Technologies LLC v. Cardiokienetix, Inc., IPR2013-00183, petition denied July 31, 2013, and NetApp, Inc. v. Personal Web Technologies, LLC, IPR2103-00319, petition denied July 25, 2013. While the first two listed cases were decided on the now familiar standard (no reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim), the NetApp case took a different path. The NetApp case was filed solely for the purpose of joinder under 35 U.S.C. § 315(c) with IPR2013-00082, the petitioner not otherwise eligible to bring this IPR under 35 U.S.C. § 315(b). The petitioner went beyond simply duplicating the earlier petition and sought to add an additional claim and additional issues to those already under consideration in the earlier IPR. The petition was denied because the petitioner failed to demonstrate that the impact of joinder, including the burden to the other parties in light of the new claim challenge and issues, and the impact on the schedule for IPR2013-00082 and other related IPRs, justified joinder.
Nineteen proceedings have been terminated by settlement, with twelve of those settlements coming in July, and 8 of which were predicated on petitions by Oracle Corporation against Clouding IP, LLC, or Community United IP, LLC. See IPR2013-00260, -00261, -00271, -00273, -00275, -00304, -00321, and -00315. One other proceeding was terminated prior to institution in July due to the patent owner’s refusal to participate. UKing Universe, Inc. v. Chang-Kang Chu, IPR2013-00212, final decision cancelling claims 1-5, dated July 12, 2013.
In all, trial is ongoing in 136 proceedings.
Recent Activity at the PTAB
In Biodelivery Sciences International, Inc. v. Monosol RX, LLC, IPR2013-00315 and -00316, the Board refused to authorize pre-Patent Owner Preliminary Response briefing on the patent owner’s contention that the petitioner lacks standing. “Upon consideration of MonoSol’s request, the Board acknowledged the potential benefit of deciding the issue of standing early in the proceeding, but determined that additional briefing prior to the Preliminary Response is unnecessary. If MonoSol wishes to address BDSI’s standing under 35 U.S.C. § 315(b), it may do so in its Preliminary Response.”
KNOW THE RULES (Part 1)
In Tasco, Inc. v. David Pagnani, IPR2013-00103, the Board refused to institute an inter partes review on May 23, 2013, making the deadline for requesting rehearing June 24, 2013. No request was filed, but on July 11, the petitioner requested a conference call. The Board’s opinion is worth quoting:
Counsel for Petitioner stated during the call that the delay was due to counsel’s mistaken belief that the rule governing times for requesting rehearing in this proceeding was 37 C.F.R. § 41.52, which states that an “Appellant” may file a request for rehearing within two months of a Board decision. Petitioner’s counsel argued that it took immediate steps to rectify the error once it was discovered that the correct rule was 37 C.F.R. § 42.71, and argued that a one-month extension of time would not burden Patent Owner. Counsel for Patent Owner opposed Petitioner’s request, arguing that the proceeding has been completed, Patent Owner suffers from having an ongoing “cloud” over its patent, and the Board’s Decision was correct.
A late action only may be excused “on a showing of good cause or upon a Board decision that consideration on the merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). Petitioner has not met this standard. Practitioners involved in inter partes review proceedings are expected to know the rules for those proceedings. Indeed, Petitioner demonstrated that it is aware of the correct rules for this proceeding by citing numerous provisions of 37 C.F.R. Part 42 in its Petition. See, e.g., Pet. 5-8, 13, 45, 47-48. Moreover, 37 C.F.R. § 41.52 states clearly that it applies to an “Appellant” requesting rehearing of a Board decision, not a petitioner or patent owner in an inter partes review proceeding. Under these circumstances, Petitioner’s mistake in relying on 37 C.F.R. § 41.52 does not demonstrate good cause for a late rehearing request or that consideration of such a request would be in the interests of justice.
KNOW THE RULES (Part 2)
In Garmin International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, the Board reiterated its position on “errata sheets” filed subsequent to depositions. The Board made clear that errata sheets directed to changing substantive testimony of a witness are not permitted absent advance permission from the Board and, moreover, even if advance permission is sought, it is not likely to be granted:
Cuozzo contacted the Board way too late for its request to change the cross
examination testimony of its witnesses. It does not mean that had the Board been contacted shortly after the cross examination, the request to change the substantive testimony would have been granted. We take this opportunity to state that unless unopposed by the other party, a request to make a material change to the substance of cross examination testimony is unlikely to be successful no matter when the request is made. Error in transcription is a different matter.
KNOW THE RULES (Part 3)
In Wowza Media Systems, LLC v. Adobe Systems Inc., IPR2013-00054 (Paper No, 16, entered July 13, 2013), the Board denied rehearing of its earlier decision denying institution of an IPR proceeding. The Board made it clear that it was not impressed with the petitioner’s arguments for being let “off the hook.” The Board declined to treat the Petition as incomplete (which would permit 1 month to correct the deficiency):
We are not persuaded by the argument that Petitioner, having failed to meet its statutory burden of proof initially, should now be given a second opportunity on the merits based on supposed procedural deficiencies in the petition, as filed. Petitioner’s argument confuses minimum procedural compliance with 35 U.S.C. § 312(a), necessary to obtain a filing date, with the statutory threshold requirements of § 314(a).
The panel was likewise unimpressed with more substantive arguments regarding the weight given an expert declaration and inconsistent meanings of terminology used in both the petition and the claims. Finally, in connection with the decision not to institute over any combination of the 10 references asserted in the petition, the Board stated:
. . . In reaching our decision not to institute, we concluded that a combination of two or more of the ten references that might establish a reasonable likelihood of prevailing on the issue of unpatentability was not properly set forth in the Petition. The arguments duly were considered. The threshold question for instituting inter partes review does not relate to whether the Board would have known something was obvious to one of ordinary skill in the art (see Req. Reh’’g 13), or whether the Board can show that some invention would have been obvious based on evidence submitted by a challenger. Rather, the threshold question is whether the information presented in the petition filed under 35 U.S.C. § 311 and any response filed under § 313 shows that there is “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (emphasis added).
PTAB Trial Section Judges
Docket assignments continue to show a heavy load of cases assigned to several experienced inter partes APJs, as reflected in the list below drawn from the spreadsheet. These numbers do not reflect decreases as a result of terminations or assignment of proceedings to another APJ for authoring an opinion. Two other APJs appeared as members of inter partes panels of the first time, namely APJs Christopher L. Crumbley and Trenton A. Ward.