Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 7
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Activity at PTAB
· Other PTAB Matters
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 April 25, 2013, 234 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. During April 2013 (through April 25), 22 petitions for IPR and 4 petitions for CBM were filed.
As of this writing, the PTAB has instituted or terminated 68 of the 234 listed proceedings. March and April were exceptionally busy, with 49 of the 68 institutions or terminations having come in that period. No termination has yet been the result of a final written decision pursuant to 35 U.S.C. § 318 or § 328.
Through April 25, 2013, 11 CBM proceedings and 45 IPR proceedings have been instituted (totaling 56 proceedings).
Twelve other proceedings have been “terminated” in one way or another:
· IPR2013-00105 we dismissed on 3/13/13. This proceeding was initially believed to be a misdirected request for reexamination, per Paper No. 2, mailed 1/9/13. Later, IPR2013-000124, involving the same patent and parties, was filed.
· Three proceedings settled: IPR2013-00078 and -00079 on 2/12/13, and IPR2013-00108 on 3/18/13. See 35 U.S.C. § 317.
· Eight proceedings were denied institution: CBM2012-00011 on 2/25/13; CBM 2013-00001 on 2/27/13; CBM2013-00003 on 3/15/13; IPR2012-00041 on 2/22/13; IPR 2013-00022, and -00023 on 4/11/13; IPR 2013-00027 on 4/2/13; and IPR 2013-00054 on 4/8/13.
The PTAB is carefully scrutinizing the proposed bases for rejection in each proceeding and, in many instances, instituted a trial on less than all the grounds advanced by the petitioner. In some instances, a patent has been challenged in more than one proceeding by the same petitioner, with the result that one petition is granted and another denied. See e.g., note USP 7,124,088 challenged in CBM2012-00010 (petition granted) and -00011 (petition denied); USP 7,877,269 challenged in CBM2013-00001 (petition denied) and -00002 (petition granted); USP 8,090,598 challenged in CBM2013-00003 (petition denied) and -00004 (petition granted);
Recent Activity at the PTAB
First Hearing in Post-Grant Proceeding: The PTAB conducted its first “trial” under the America Invents Act on April 17, 2013. Due to public curiosity regarding the proceeding, the PTAB broadcast the hearing, permitting members of the public to dial in and listen to the proceeding live. The hearing was reminiscent of those conducted by the former USPTO Board with respect to interference hearings. Each side (patent owner and challenger) was given about 1 hour of time to divide between presenting their position and rebuttal. Live witnesses were not presented. It is expected that any witness testimony deemed necessary would be presented via deposition transcript. The tribunal tasked with hearing the case consisted of seasoned Administrative Patent Judges Michael P. Tierney and Sally C. Medley, along with newer APJ, Rama G. Elluru. APJ Tierney was active in questioning the attorneys for both sides, with the questioning focused on the technical issues relating to the subject matter. This hearing was devoted to a single issue (patentable subject matter under 35 U.S.C. §101), and the participants did not use all of their allotted time. This may, in the future, lead the panel to allot less time for single issue cases.
PTAB Provides Guidance To Those Seeking To Settle: In orders entered in Macauto U.S.A. v. Bos GMBH & KG, IPR2012-00004, on 2/4/13 and IBM Corp. v. Financial Systems Technology (Intellectual Property) Pty. LTD., IPR2013-00078, on 2/8/13, the PTAB provided guidance to parties seeking to settle, referencing 35 U.S.C. § 317(a) and (b), 37 CFR § 42.72 and § 42.74(a), (b) and (c), the Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (August 14, 2012), and FAQ G3 on the Board’s PRPS website page. In each instance, the parties were authorized to file a joint motion to terminate within a limited period of time. In terminating the IBM CORP. case, the panel explicitly noted that: “This case is in the preliminary proceeding stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment. Therefore, the joint motion to terminate the proceeding is GRANTED.” IPR2013-00078, Paper No. 11, entered 2/12/13, at p.2; footnotes omitted. In terminating the Macauto U.S.A. case, which was instituted 1/24/13) the Board characterized the proceeding as being “in the preliminary stages” and noted that the initial conference call had not been held, that the co-pending district court litigation was being dismissed and that no other actions were pending, under which circumstances, the Board determined it was appropriate to terminate without rendering a final written decision. IPR2012-00004, Paper No.23, entered 2/20/13, at p. 2. The opinions appear to suggest that, at some stage (what stage is not yet clear), the Board may become reluctant to dismiss the proceeding as a result of settlement.
PTAB Denies Bid to Submit Additional Grounds of Unpatentability Following Institution of IPR: On April 2, 2013, a three judge panel (Medley, Turner and Chang) denied the Petitioner’s (Research In Motion) attempt to present additional asserted grounds of unpatentability of the Patent Owner’s (Mobilemedia Ideas LLC) patent. Research in Motion Corp. v. Mobilemedia Ideas LLC, IPR2013-00016, Paper No. 19.
PTAB Provides Guidance Regarding Discovery and Evidence: In a series of papers in Garmin International Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, the panel of Administrative Patent Judges Lee, Tierney and Cocks discussed: (1) the meaning of “routine discovery” and “additional discovery,” and five factors important to the “necessary in the interest of justice” standard of 35 U.S.C.§ 316(a)(5) (Paper No. 26, entered 3/5/13, pp. 3-16); and, (2) the nature of information properly subject to a motion to seal and the standard employed in deciding such a motion (Paper No. 34, entered 3/14/13; and Paper No. 36, 4/5/13).
Premature effort to exclude: In LKQ Corp. v. Clearlamp, LLC, IPR2013-00020 (Paper No. 17, entered 3/5/13), the PTAB panel (Administrative Patent Judges Medley, Turner, and Cocks) dismissed the patent owner’s (Clearlamp LLC) request (which it treated as a “motion”) to exclude evidence submitted with the petition by petitioner (LKQ Corp.). The request was part of the patent owner’s preliminary response. The PTAB dismissed the untimely challenge without prejudice for renewing under the proper procedures and circumstances.
A motion for additional discovery relating to commercial success must address the nexus between the information sought and the allegation of commercial success. In Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, -00019 (Paper No. 32, entered 3/8/13), a PTAB panel (Administrative Patent Judges Medley, Boalick and Giannetti) denied the patent owner’s motion for additional discovery of the petitioner’s sales of an allegedly infringing product for lack of a persuasive showing of nexus between the petitioner’s sales and the patent owner’s claimed invention.
PTAB Trial Section Judges: Docket assignments continue to show a heavy load of cases being assigned to several experienced inter partes APJs, as reflected in the following information drawn from the spreadsheet. These numbers do not reflect any decrease as a result of terminations of proceedings.
Other PTAB Matters: The PTAB posted the following three opinions on its “Informative Opinions” page: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp
Ex parte Smith, Appeal No. 2012-007631 (14 March 2013)
Ex parte Erol, Appeal No. 2011-001143 (13 March 2013)
Ex parte Lakkala, Appeal No. 2011-001526 (13 March 2013)
In each, the expanded Board panel (Administrative Patent Judges MacDonald, Horner, Kim, Benoit and Pettigrew) entered a new ground of rejection under 35 U.S.C. § 112, second paragraph. In the context of each of these cases, the Board determined that the term “processor” is a non-structural term that would not be understood by an ordinarily skilled artisan as having sufficiently definite structure to perform all the recited functions of the claims and is used as merely a substitute for the term “means for” associated with recited functional language and thus invokes the application of § 112, sixth paragraph. In each instance, the panel concluded that the specification failed to disclose an algorithm for performing the functions recited in the processor limitation, thus making the claims indefinite under 35 U.S.C. § 112, second paragraph.