Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 4
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Activity at PTAB in December, 2012
· Errors Noted By PTAB
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 December 31, 2012, 111 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. During December 2012, 31 petitions for IPR were filed. Surprisingly, there were no reported petitions for CBM filed.
The 31 petitions filed in December were filed by 13 different parties: one (Oracle) filed 11 petitions, another (EMC Corporation) filed 6 petitions, 4 parties filed multiple petitions and 7 parties filed a single petition each.
These 111 petitions (the total since the inception of the proceedings) have been filed by 48 petitioners. Five petitioners (Liberty Mutual Insurance Co., Corning Inc., Chi Mei Innolux Corp, Oracle Corp. and EMC Corporation) have, in aggregate, filed 44 petitions, or about 40% of all petitions. Stated differently, about 10% of all petitioners account for about 40% of the filings.
Activity at the PTAB in December 2012
Actions by the PTAB of particular interest are discussed below.
· PTAB Orders Stay of Ex Parte Reexamination Proceeding: In an order entered December 26, 2012, the panel stayed concurrent ex parte reexamination of the patent involved in the inter partes review “pending the termination or completion of the instant proceeding.” Avaya Inc. v. Network-1 Security Solutions, Inc., IPR2013-00071.
· Petition For Joinder Filed: In a document styled as a petition for joinder and filed the same date as its petition for IPR, Motorola Solutions, Inc. seeks “joinder of the currently pending ex parte reexamination of the claims 18-20 of the ‘880 patent (Serial No. 90/012481) into the concurrently filed petition for inter partes review of claims 18-20 of Patent No. 6,065,880 (‘the ‘880 patent’) once granted.” Motorola Solutions Inc. v. Mobile Scanning Technologies, LLC, IPR2013-00093.
· PTAB Introduces New Information Page: The PTAB has introduced a new web page listing “Representative Orders, Decisions, and Notices” at the following link: http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp. As of January 4, the site lists the following (all of which have been reported upon in earlier issues of KeePing TABs):
Representative Orders and Decisions:
· PTAB Trial Section Judges: In December, 4 IPR review proceedings were assigned to Judge Justin T. Arbes while one proceeding involving a design patent (the first design patent to undergo IPR) was assigned to Judge Jennifer F. Bisk. Neither of these judges was previously assigned to such proceedings. The other proceedings received in December were docketed to judges whose names are now-familiar in connection with these proceedings: Judges Lee, Gianetti, Medley, Chang, McNamara, and Tierney.
Errors Noted by Board
· The Board continued to point out common failings, such as failure to provide service information, failure to number exhibits sequentially in the 1001-1999 range, and failure to label each exhibit in the lower right hand corner with the petitioner’s name, exhibit number and page number. See, e.g., Notice mailed January 3, 2013 in IPR2013-00101
· 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, e.g., Notice (undated) in IPR2013-00067
· For a series of papers addressing what may happen when erroneous papers are uploaded onto the Board Patent Review and Processing System (“PRPS”), have a look at the undated Decision on Motion entered by Judge Giannetti, the subsequent renewed motion to correct clerical error filed by the Petitioner on December 24, 2012, and the Patent Owner’s opposition to the renewed motion, filed on January 2, 2013, in IPR2013-00063.