Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 2
In This Issue
· Tally of Filed IPR and CBM - 13 CBM petitions and 41 IPR petitions as of November 1, 2012
· Additional Activity at the PTAB - Guidance issued by PTAB on several issues
Tally of Filed IPR and CBM
Additional Activity at the PTAB
Actions of particular interest include a pair of expanded panel decisions, a denial of requested grounds, an order setting a time of less than 3 months for the patent owner’s preliminary response, and identification of several common types of errors in petitions. These specific cases of note are discussed below.
· PTAB Denies 196 of 422 Asserted Rejections: In a 3 member panel decision, the PTAB denied 196 of 422 asserted rejections in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003 (undated notice 8).
· PTAB Appears to be Interactive in Managing Cases: In a pair of orders in SAP America Inc. v. Versata Development Group, CBM2012-00001, the PTAB set and reset the date for the Patent Owner’s Preliminary Response, in each instance to a period less than 3 months from the date of the petition due to the extensive litigation history of the involved patent. (Paper Nos.10 and 16.) These orders also document conference calls among the PTAB and the parties, and are thus of general interest as to procedure.
· Core PTAB Trial Section Judges: The composition of the expanded panels (decisions described below) appears to identify the core membership of the PTAB Trial Section, or at least so much of it as has been assigned responsibility for CBM and PGR, namely Judges Tierney, Lee, Lane, Medley, Chang, Giannetti and McNamara, along with Chief Judge Smith and Vice Chief Judge Moore. Two APJS in addition to those listed have participated in 3 member panel decisions, although not as authors: Judge Michael R. Zecher in CBM2012-00003 (undated notice 8), and Judge Rama G. Elluru in CBM2012-00001 (Paper Nos. 10, entered Oct. 17. 2012, and 16, entered Nov. 1, 2012).
· Errors noted by Board: In 2 instances:
o Petitioner’s exhibits are not sequentially numbered in the 1001-1999 range as required per 37 C.F.R. § 42.63(c).
o Petitioner listed all counsel associated with the customer number as back-up counsel. Per 37 C.F.R. § 42.10(a), “the party must designate . . . a back-up counsel who can conduct business on behalf of the lead counsel.”
In each instance, the petitioner was given 5 days to correct the petition to retain the original filing date.
· Pro Hac Vice Admission Requirements Set Forth by PTAB: An expanded panel of the PTAB issued an order authorizing a motion for pro hac vice admission pursuant to 37 CFR § 42.10 in Motorola Mobility LLC, v. Michael Arnouse, IPR2013-00010 (PTAB Oct. 15, 2012), setting forth the content that a pro hac motion is expected to contain. Per the PTAB:
A motion for pro hac vice admission must:
a. Contain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding.
b. Be accompanied by an affidavit or declaration of the individual seeking to appear attesting to the following:
i. Membership in good standing of the Bar of at least one State or the District of Columbia;
ii. No suspensions or disbarments from practice before any court or administrative body;
iii. No application for admission to practice before any court or
administrative body ever denied;
iv. No sanctions or contempt citations imposed by any court or
v. The individual seeking to appear has read and will comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of the C.F.R.;vi. The individual will be subject to the USPTO Code of Professional Responsibility set forth in 37 C.F.R. §§ 10.20 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a);
vii. All other proceedings before the Office for which the individual has applied to appear pro hac vice in the last three (3) years; and
viii. Familiarity with the subject matter at issue in the proceeding.
c. Where the affiant or declarant is unable to provide any of the information requested above in part 2(b) or make any of the required statements or representations under oath, the individual should provide a full explanation of the circumstances as part of the affidavit or declaration.
· PTAB Gives Petitioner Seven (7) Days To Elect Rejections To Pursue: In Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003 (PTAB undated, identified in the PSRS file as Notice 7), an expanded panel, upon review of a petition said to assert 422 grounds of unpatentability against the 20 claims of the patent, gave the petitioner 7 days to elect from among identified groups of supposedly redundant grounds of rejection. The PTAB set forth its views of impermissible redundancy of rejections (slip op. at. 2-3):
Part 42 of Title 37, Code of Federal Regulations, governs proceedings before the Board and 37 C.F.R. § 42.1(b) provides that “[t]his part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.” When promulgating the regulations, the Board considered “the effect of the regulations on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings” as mandated by 35 U.S.C. § 326(b). Conducting a proceeding contrary to those statutory considerations would frustrate Congressional intent.
. . . [M]ultiple grounds, which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them, are contrary to the regulatory and statutory mandates, and therefore are not all entitled to consideration. In the present situation, the multiplicity of grounds requires so much of the petition that the Petitioner has failed to expressly identify the differences between any claim and the prior art in the Petitioner’s assertions of obviousness.
A petitioner has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). Differences between the claimed invention and the prior art are a critically important underlying factual inquiry for any obviousness analysis. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). A petitioner who does not state the differences between a challenged claim and the prior art, and relies instead on the Patent Owner and the Board to determine those differences based on the rest of the submission in the petition risks having the corresponding ground of obviousness not included for trial for failing to adequately state a claim for relief.
Here, we discuss only redundancy. Two types of redundancy are common in the instant petition. The first involves a plurality of prior art references applied not in combination to complement each other but as distinct and separate alternatives. All of the myriad references relied on provide essentially the same teaching to meet the same claim limitation, and the associated arguments do not explain why one reference more closely satisfies the claim limitation at issue in some respects than another reference, and vice versa. Because the references are not identical, each reference has to be better in some respect or else the references are collectively horizontally redundant.
The second type of redundancy involves a plurality of prior art applied both in partial combination and in full combination. In the former case, fewer references than the entire combination are sufficient to render a claim obvious, and in the latter case the entire combination is relied on to render the same claim obvious. There must be an explanation of why the reliance in part may be the stronger assertion as applied in certain instances and why the reliance in whole may also be the stronger assertion in other instances. Without a bi-directional explanation, the assertions are vertically redundant.