Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 5
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Activity at PTAB in January, 2013
· Errors Noted By PTAB
· Fees for AIA Proceedings are changing
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 January 31, 2013, 136 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. During January 2013, 25 petitions for IPR were filed. For the second straight month, there were no reported petitions for CBM filed.
So far, nine proceedings have been instituted: CBM2012-00001, -00002, -00004, -00005, and -00007, and IPR2012-00001, -00004, -00026, and -00027. See the spreadsheet for dates of institution. In most instances, a scheduling order has accompanied or closely followed the order instituting a trial. The scheduling order will typically set forth seven due dates:
Due Date 1:
Patent owner’s response to the petition
Patent owner’s motion to amend the patent
Due Date 2:
Petitioner’s reply to patent owner response to petition
Petitioner’s opposition to motion to amend
Due Date 3:
Patent owner’s reply to petitioner opposition to motion to amend
Due Date 4:
Petitioner’s motion for observation regarding cross-examination of reply witness
Motion to exclude evidence
Request for oral argument
Due Date 5:
Patent Owner’s response to observation
Opposition to motion to exclude
Due Date 6:
Reply to opposition to motion to exclude
Due Date 7:
Oral argument (if requested)
Activity at the PTAB in January 2013
Actions by the PTAB of interest are discussed below.
PTAB Addresses § 315(b) one year bar: 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 this proceeding.
PTAB Addresses Real Party In Interest Provisions: On January 24, 2013, a three judge panel (Medley, Easthom and Arbes) held in Intellectual Ventures Management, LLC v. Xilinx, Inc., IPR2012-00018, -00019, -00020, and -00023, that patent owner Xilinx did not demonstrate a failure by petitioner Intellectual Ventures Management to identify all of the real parties in interest as required by 37 CFR § 42.8(b)(1).
PTAB Grants Pro Hac Vice Motions: Motions for pro hac vice admission were granted in IPR2012-00007 (for both parties) and in IPR2013-00012.
PTAB Trial Section Judges: Docket assignments show a heavy load of cases being assigned to several experienced inter partes APJs, as reflected in the following information drawn from the spreadsheet.
Errors Noted by Board
According to the PTAB’s PRPS page (http://www.uspto.gov/ip/boards/bpai/prps.jsp), the “top 10 common errors” in filing a petition for IPR or CBM include:
1. Failure to provide a copy of all exhibits relied upon;
2. Exhibits do not match the documents listed in the Exhibit List;
3. Failure to identify related matters or provide a statement that there are no related matters;
4. Exhibits are not sequentially numbered in the 1001-1999 range;
5. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;
6. Margins less than 1 inch as required by § 42.06;
7. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a);
8. The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a);
9. The petition and supporting documents are served on the patent owner later than the filing of the petition; and
10. Improper usage of claim charts.
Regarding error 10, the PTAB observes that, “Extensive use of claim charts in a petition is discouraged:”
The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require double spacing. Additionally, the rules require that the petition specify where each element of a challenged claim is to be found in the prior art. The element by element showing may be provided in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one’s argument and claim construction in a claim chart to circumvent the double spacing requirement is not permitted.
The Board previously accepted a few petitions with claim charts that include claim constructions, arguments, and explanations as to how the claim is unpatentable because the procedure for filing AIA petitions is new. However, correction is now required when a petition includes improper usage of claim charts.
Where claim charts are appropriate, they may not be presented in landscape orientation, per the same source:
All documents, other than drawings, must be written in portrait orientation including claim charts and arguments. The Board previously accepted a few petitions with claim charts written in landscape orientation because the procedure for filing AIA petitions is new. However, the Board observes that the number of petitions that have claim charts in landscape orientation is growing.
Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a document or portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent with the policy set forth in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to become a part of the permanent record in the application or patent files within the USPTO.
Other errors recently noted include:
Failure to clearly set forth the claim construction in the claim construction section of the petition (rather than in the section setting forth how claims are unpatentable); see, e.g., IPR2013-00126, -00127, and -00128.
Failure to abide by the prohibition against ex parte communication; see, e.g., IPR2013-00035 and -00037 (ex parte e-mail to APJ seeking “proper procedure for requesting judicial notice of . . . [a] false statement” in patent owners’ preliminary response);CBM2012-0010 and -00011, CBM2013-00001 and -00002 (ex parte e-mail seeking “procedural assistance” which “identifies evidence and explains its relevance”)
Fees for AIA Proceedings are Changing
Per 78 Fed. Reg. 4212, 4291 (January 18, 2013), effective March 19, 2013, the fees for IPR and PGR are as follows:
§ 42.15 Fees.
(a) On filing a petition for inter partes review of a patent, payment of the following fees are due:
(1) Inter Partes Review request fee: $9,000.00.
(2) Inter Partes Review Post-Institution fee: $14,000.00.
(3) In addition to the Inter Partes Review request fee, for requesting review of each claim in excess of 20: $200.00.
(4) In addition to the Inter Partes Post-Institution request fee, for requesting review of each claim in excess of 15: $400.00.
(b) On filing a petition for post-grant review or covered business method patent review of a patent, payment of the following fees are due:
(1) Post-Grant or Covered Business Method Patent Review request fee: $12,000.00.
(2) Post-Grant or Covered Business Method Patent Review Post-Institution fee: $18,000.00.
(3) In addition to the Post-Grant or Covered Business Method Patent Review request fee, for requesting review of each claim in excess of 20: $250.00.
(4) In addition to the Post-Grant or Covered Business Method Patent Review request fee Post-Institution request fee, for requesting review of each claim in excess of 15: $550.00.
(c) On the filing of a petition for a derivation proceeding, payment of the following fees is due:
(1) Derivation petition fee: $400.00.
(d) Any request requiring payment of a fee under this part, including a written request to make a settlement agreement available: $400.00.