Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 3
In This Issue
· Tally of Filed IPR and CBM - 15 CBM petitions and 64 IPR petitions as of November 29, 2012
· Additional Activity at the PTAB – The PTAB continues to provide guidance on several issues
Ongoing Tally of Filed IPR and CBM
On September 16, 2012, the USPTO began accepting petitions seeking to initiate inter partes review proceedings (“IPR petitions”) and petitions for post grant review against certain patents directed to covered business methods (“CBM petitions”). As of noon on November 29, 2012, 79 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. In aggregate, there have been 15 petitions requesting CBM and 64 requesting IPR. These 79 petitions have been filed by 39 petitioners. Two petitioners (Liberty Mutual Insurance Co. and Corning Inc.) have each accounted for 10 of the petitions, while a third petitioner (Chi Mei Innolux Corp.) has filed 6: these three corporations together have filed about a third of all petitions so far. Please click here for the latest spreadsheet reflecting the filings.
Activity at the PTAB in November 2012
Actions of particular interest are discussed below.
· PTAB Orders Stay of Inter Partes Reexamination Proceeding: In an order entered November 6, 2012, the panel stayed concurrent inter partes reexamination of the patent involved in the inter partes review “pending the termination or completion of the instant proceeding.” CBS Interactive. V. Helferich Patent Licensing, LLC, IPR2013-00033.
· PTAB Continues to be Interactive in Managing Cases: In a series of orders in SAP America Inc. v. Versata Development Group, CBM2012-00001, the PTAB denied a motion for pro hac vice admission and issued orders governing conduct of the proceedings, pertaining to a protective order, a request for additional discovery, and authorization to use particular experts already employed in related litigation (Paper No. No. 21, entered November 6, 2012, No. 24, entered November 15, 2012, and No. 27, entered November 19, 2012). These orders also document conference calls among the PTAB and the parties, and are thus of general interest as to procedure.
· PTAB Trial Section Judges: Although no judges other than the core 7, namely Judges Tierney, Lee, Lane, Medley, Chang, Giannetti and McNamara, have as yet been assigned as the APJ to manage proceedings, additional APJs names have begun to appear as members of panels, and even as authors of PTAB orders. In addition to Chief Judge Smith and Vice Chief Judge Moore and the core 7, others who have participated in 3 member panel decisions include:
o Judge Zecher in CBM2012-00003 (undated notice 8),
o Judge Elluru in CBM2012-00001 (Paper Nos. 10, entered Oct. 17. 2012, and 16, entered Nov. 1, 2012),
o Judges Richard M. Lebovitz and Deborah Katz in IPR2012-00006 (Paper No. 12, entered November 9, 2012), IPR2012-00007 (Paper No. 20, entered November 9, 2012), and IPR2013-00011 (Paper No. 11, entered November 9, 2012),
o Judges Lora M. Green and Jeffrey B. Robertson in IPR2012-00022 (Paper No. 14, entered November 20, 2012)(Green, author);
o Judge Scott R. Boalick in IPR2012-00026 (Paper No. 12, entered November 2, 2012),
o Judges Robertson and Rae Lynn Guest in IPR 2012-00035 (Paper No. 13, entered November 9, 2012),
o Judges Scott R. Boalick and Turner in IPR2013-00033 (entered November 6, 2012).
· Errors/Preferences noted by Board:
o In CBM2012-00001, Paper No.27, entered November 19, 2012, the panel requested that “parties generally identify how a proposed protective order differs from the Board’s default protective order.”
o Petitions exceeding the page limit, where the limit is not waived pursuant to granted motion, will be expunged from the record, as will any oppositions filed without authorization by the Board; see IPR2012-00006, Paper Nos. 11 and 12, both entered November 9, 2012; IPR2012-00007, Paper Nos. 18, 19 and 20, all entered November 9, 2012; IPR2013-00011, Paper Nos. 10 and 11, both entered November 9, 2012
o Using a single spaced claim chart to present both one’s claim construction (which may be single spaced) and one’s argument (required by rule to be double spaced) will result in the petition being ruled defective. See IPR2013-00034, and -00036, Paper Nos. 4 and 6, entered November 5 and 6, respectively; IPR2013-00038, unnumbered paper entered November 9, 2012
o A hand delivery address in addition to a post office box is required as part of the mandatory notices; see IPR2013-00034, Paper Nos. 4 and 6, entered November 5 and 6, respectively
o In nearly identical terms, notices of defective petitions were entered on November 26, 2012, in IPR2103-00057, -00058, and -00059, indicating that the petitions were complete but defective for lack of
§ A certification that the challenged patent is available for the chosen proceeding,
§ A statement that the petitioner is not barred or estopped from requesting the chosen proceeding,
§ A statement of how the challenged claims are to be construed,
and reminding the petitioner that “the exhibits need to be numbered sequentially in the 1001-1999 range.”
· Pro Hac Vice Admission Considered by PTAB: As reported in KeePing TABS, No. 2, 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. The PTAB has now had opportunity to consider two such motions, in one instance denying pro hac vice recognition and in the other granting such recognition based on the particular facts of each motion.
o In CBM 2012-00001, Paper No. 21, entered November 6, 2012, the panel took the position that based on the facts presented, the party moving the pro hac vice admission failed to meet its burden of establishing good cause.
o In CBM2013-00005, Paper No. 13, entered November 2, 2012, the panel took the position that the party moving the pro hac vice admission met its burden of establishing good cause.
· PTAB Adheres on Reconsideration to Earlier Order Giving Petitioner Seven (7) Days To Elect Rejections To Pursue: As reported in KeePing TABS, No. 2, an expanded panel of the PTAB in Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003, 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 same expanded panel of the PTAB adhered to its position upon rehearing (Paper No. 11, November 26, 2012), stating (slip op. at 2-3):
We disagree that Petitioner may hold back in reserve references disclosing a claim feature while relying on expert testimony urging that the feature was well known in the art. The references should be cited in support of the expert’s opinion. Presenting different grounds based separately on expert opinion and on references creates redundancy, promotes inefficiency, causes confusion, and imposes unnecessary burden both on the Board and the Patent Owner.
We also could not have misapprehended or overlooked something not adequately explained in the initial petition. For instance, Petitioner did not “explain” in the initial petition the reasons it now presents as to why it supposedly relied on each of Bouchard, Gray, and Lewis separately, i.e., to present three alternative ways a feature in claim 17 may be met. A request for rehearing is not an opportunity to supplement the initial petition. . . .
A petitioner is not generally precluded from arguing alternatives. As was made clear in our initial decision, alternative grounds may be presented if an actual need for presenting alternatives exists and is adequately explained in the petition. That the Patent Owner may amend a challenged claim to recite something other than what the Petitioner has initially cited does not generally present a genuine need, because Petitioner may oppose a motion to amend and respond to new issues arising from the amendment including evidence supporting the opposition. See 37 9 C.F.R. § 42.23 and Section H of the Office Patent Trial Practice Guide, 77 FR 10 48756, 48767 (Aug. 14, 2012)