Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 11
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Activity Concerning Stays
· Other Matters of Interest at the PTAB
· PTAB Trial Section Judges
As of the end of August, the PTAB has instituted, and trial is ongoing in, 168 of the 502 listed proceedings; 288 petitions await decision.
The PTAB has refused to institute 25 proceedings, the 11 most recent denials occurring in August:
All of the above listed proceedings, except Universal Remote Control, Inc. v. Universal Electronics, Inc., IPR2013-00168 (August 26, 2013) (Blankenship, Medley and Boalick), were decided on the now familiar standard (no reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim).
Universal Remote Control, Inc. is of interest as a counterpart to Motorola Mobility LLC v. Arnouse, IPR2013-00010. On January 30, 2013, a three judge panel (Tierney, Chang and Bisk) held in Motorola Mobility LLC v. Arnouse, IPR2013-00010, that the one year time period for filing an inter partes review under 35 U.S.C. § 315(b) is triggered not by the date of filing of the complaint by the plaintiff/patent owner but by the date of service of the summons upon the defendant/petitioner. As such, the petitioner was not barred from filing the petition in that proceeding.
In the Universal Remote Control, Inc. proceeding (slip op. at 3), on the other hand, the panel noted:
Petitioner was served with a complaint alleging infringement of the '426 patent on two occasions. The first complaint, in connection with a first case styled Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SAVC 00-1125 AHS (EEx)(C.D. Cal.), was served on Petitioner on March 21, 2001. The second complaint, in connection with a second case styled Universal Electronics Inc., v. Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx) (C.D. Cal.), was served on Petitioner less than 12 months prior to the filing date of the Petition.
According to the Universal Remote Control, Inc. panel (slip op. at 4-5), serving the second complaint “does not nullify the effect of a first served complaint for purposes of 35 U.S.C. 315(b).” Thus, while the Board acknowledged that the plain language of 315(b) does not address multiple lawsuits, the Board disagrees that the one-year grace period applies only to the last suit filed. Thus, the Board concludes that “§ 315(b) means that an inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent.”
Twenty proceedings have been terminated by settlement. As reported in the August KEEPING TABS, one other proceeding was terminated prior to institution based on the patent owner’s refusal to participate. An IPR proceeding erroneously filed as a Post Grant Review (PGR) in the PTAB’s Patent Review Processing System (PRPS) was dismissed and the petition payment refunded (PGR2013-00007, dismissed, June 14, 2013); so far, no true PGR proceeding has been requested.
Recent Activity Concerning Stays
PTAB Orders Stay Of Ex Parte Reexamination In Light Of Petition For Inter Partes Review.
In Lumondi Inc.v. Lennon Image Technologies LLC, IPR2013-00432 (Paper No. 7, August 6, 2013), a PTAB panel (Pothier, Arbes and Ward) acknowledged that under 35 U.S.C. § 305 they “will not ordinarily stay a reexamination because, in the absence of good cause, reexaminations are conducted with special dispatch,” but stated that concurrent proceedings “would duplicate efforts within the Office and could potentially result in inconsistencies,” as the patent owner could amend claims in the reexamination while the PTAB is conducting the inter partes review.
Although the proceedings are based on different prior art and were filed by different parties, several of the claims were challenged in both proceedings creating a possibility of inconsistency; and a PTAB decision may simplify the issues in reexamination. The Board therefore, exercised its discretion under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to stay the reexamination.
Magistrate Judge Recommends Stay In Light of Third Party Petition For Inter Partes Review.
In e-Watch, Inc. v. ACTi Corp. (Civil No. SA-12-CA-695-FB, W. Texas) Plaintiff e-Watch filed complaint for patent infringement of four patents against Defendant ACTi in July 2012. Third party Mobotix petitioned for inter partes review (IPR) of three of the four patents on or before June 7, 2013. ACTi then filed a motion to stay proceedings in the district court.
The Magistrate Judge weighed the following three factors: (1) the stage of the litigation in the Court, (2) simplification of the issues and trial, and (3) undue prejudice and tactical considerations. The Court found that although e-Watch initiated the case more than a year before the motion to stay, ACTi had represented without rebuttal from e-Watch that “discovery thus far [is] limited to an exchange of Preliminary Disclosures” and neither side had submitted evidence to show it had spent “significant time or money to prepare for claim construction,” and that the stage of the litigation weighed in favor of a stay.
Although ACTi is not party to the IPR and would not be estopped by a decision its results, the USPTO has not accepted the IPR petitions submitted by Mobotix [which remains the case as of the writing of this newsletter], and one of the patents-in-suit is not a subject of the IPR, invalidation by the USPTO of even one of the patents would have an effect on the patent issues to be litigated. The Magistrate Judge found that factor of simplification of the issues and trial “weighs in favor of a stay.”
e-Watch asserted that the parties are “Direct Competitors” and sought injunctive relief, but did not submit “any evidence that the parties have ever competed for a sale or are ‘direct competitors’” and did “not identify how it will be injured if the Court grants a stay.” The Magistrate Judge cited a Middle District of Florida case that “if the PTO declines inter partes review, little time is lost, but if [the] PTO grants inter partes review, the promise is greater for an important contribution by the PTO to resolution of the governing issues in the litigation,” and found that the undue prejudice factor weighs in favor of a stay.
The Magistrate Judge also noted that it would be inappropriate to stay the litigation for the three patents subject to the IPR and continue litigation on the remaining patent. This would significantly increase costs requiring two trials and concluded that staying the whole case pending the IPR would “simplify the issues and streamline the trial.” The Magistrate Judge therefore recommended that the Motion for Stay be granted.
Other Matters of Interest at the PTAB
The following representative Trial Hearing Orders have been posted on the PTAB’s website at http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp. The matter to which each pertains is summarized by the title. IPR2012-00005 and -00027 are worth reviewing if you are thinking of amending your claims. Regarding IPR2013-00043, additional discovery was granted as to lab notebooks but denied as to samples of the compositions involved and further information as to “inconsistent positions” beyond that required by routine discovery.
Statutory subject matter. The precedential; opinion, Mewherter, appears to be the first ex parte opinion adopted as precedential in roughly three years. Judge Homere authored the opinion for a panel also including Judges Delmendo, MacDonald, Jeffery and Wood. The opinion bears a notice labeling it “[p]recedential as to the treatment of the rejection under 35 U.S.C. § 101.” In summary, claim 16 of the application called for “machine-readable storage medium,” the appellant contended that this language limited the claim to structure, making the claim statutory, the examiner disagreed. After examining what it termed extrinsic and intrinsic evidence bearing on the meaning of the term; the Board agreed with the examiner (slip op. at 13):
Given the significant amount of available guidance and evidence supra, we conclude that those of ordinary skill in the art would understand the claim term “machine-readable storage medium” would include signals per se. Further, where, as here, the broadest reasonable interpretations of all the claims each covers a signal per se, the claims must be rejected under 35 § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter).
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, but with increasing numbers being assigned to more recently appointed Board members.. These numbers do not reflect decreases as a result of terminations or assignment of proceedings to another APJ for authoring an opinion.