Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 8
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 May 31, 2013, 289 petitions for IPR or CBM proceedings have been identified in the PTAB’s listing of proceedings. During May 2013, 44 petitions for IPR and 7 petitions for CBM were filed. This is the single highest number of CBM petitions filed for any one month since September, 2012. Four of the 7 CBM petitions were filed by Apple, Inc. against two patents owned by SightSound Technologies.
As of this writing, the PTAB has instituted or terminated 101 of the 289 listed proceedings. The PTAB has refused to institute 10 proceedings. Five proceedings have been terminated by settlement. One proceeding was dismissed.
Recent Activity at the PTAB
In Orders Entered in Garmin International, Inc. v. Cuozzo Speed Tech. LLC, IPR2013-00001, Paper 36, Entered April 5, 2013, the PTAB stated that only “confidential information” is protected from disclosure, 35 U.S.C. § 316(a)(7), and that the standard for granting a motion to seal is “for good cause.” 37 C.F.R. § 42.54. The PTAB quoted the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), which provides “The rules aim to strike a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information.”
PTAB granted the motion to seal a personal driving record, copies of personal and cashier’s check containing personal financial information such as bank account numbers, and a business contract. The pertinent details were disclosed in the Declaration of Inventor, the public interest in the personal details was little to none, and disclosure could cause harm via criminal means especially with regard to checking account numbers. PTAB found that there was good cause to grant the motion to seal these Exhibits.
PTAB denied the motion to seal communications between Inventor and his attorney. Although attorney-client privilege ordinarily applies to exhibits, these exhibits were submitted on Inventor’s initiative to show pre-filing conception and diligence toward constructive reduction to practice. The Inventor was concerned that other parties may incorrectly argue that the waiver is broad and that attorney-client communication in all related action should become discoverable. The PTAB found that this concern is speculative and that the public has an interest in knowing what information the Inventor believes is important in determining a substantive issue in the case.
For future reference PTAB noted that: “To minimize cost, delay, and burden on the parties and Board, parties should not submit confidential personal information which clearly has little relevance to the merits of the case, such as account number on a check, social security number, and full driving record. Non-useful personal confidential information in a document should be redacted when the document is submitted and the submission should be accompanied by a paper noting the reasons for the redaction. Similarly, moving to seal information when that information is contained in a public document filed by the moving party also leads to inefficient use of resources and should be avoided.”
PTAB Authorized Third Party, Apple, Inc. To File Motion For Joinder In Inter Partes Review Under 37 C.F.R. § 42.122(b).
(IPR2013-00004), paper 15, Entered April 24, 2013
37 C.F.R. § 42.101(b) prohibits petitions requesting inter partes review more than one year after the party is served with a complaint alleging infringement of the patent. However, this time limit does not apply when the petition for inter partes review is accompanied by a request for joinder under 37 C.F.R. § 42.122(b).
In orders entered on Kyocera Corp. v. Softview LLC IPR 2013-00004, the PTAB authorized third party, Apple, Inc. to file Motions for Joinder in inter partes review IPR2013-00004 and IPR2013-00007 and concurrently file its own petitions for inter partes review.
Softview opposed the Motion for Joinder because a patent infringement suit had been underway for over a year and joinder would circumvent the one year time limit under 37 C.F.R. § 42.101(b). The PTAB had previously stayed Apple-initiated reexamination proceedings concerning the involved patents. Apple argued that it should be added as a party to these inter partes reviews because it represents the only option to participate in review of the patents.
The PTAB required the Motions to include reasons why joinder is appropriate, any new ground of unpatentability being raised in the concurrently-filed petitions for inter partes review, and a plan to simplify briefing and/or discovery to minimize schedule impact. The PTAB allowed Petitioner and Patent Owner one week from filing of the Motions for Joinder to file any opposition to Apple’s motion to join and did not authorize Apple to file a reply to any opposition at this time.
The PTAB made clear this was not a decision on the merits of the Joinder Motions.
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 or assignment of proceedings to another APJ for authoring an opinion.
To date, 11 APJs have been assigned to manage proceedings. A review of the papers filed in the proceedings show a total of 31 APJs empaneled on institutions/denials/terminations. In addition to the 11 judges identified above, those judges include, in no particular order,
Rama G. Elluru, Jeffrey B. Robertson, Josiah Cocks, Rae Lynn P. Guest,
Howard B. Blankenship, Bryan F. Moore, Scott R. Boalick, Michael W. Kim,
Michael J. Fitzpatrick, Glenn J. Perry, Stephen C. Siu, Richard M. Lebovitz.
Scott E. Kamholz, Deborah Katz, Kevin F. Turner, Karl D. Easthom,
Trenton A. Ward, Anton W. Fetting, Miriam L. Quinn, and James B. Arpin
Other PTAB Matters: The PTAB posted as “Informative Opinions” two decisions (one a decision on motion, and the second a decision on rehearing) by the same blue-ribbon 7 judge expanded panel, including the Chief APJ and Deputy Chief APJ (the new title for the position formerly known as Vice Chief APJ), and authored by APJ Fred E. McKelvey, a former Chief APJ (1993-1995) and PTO Solicitor. The decisions address the Board’s authority to permit the filing of a Statutory Invention Registration (“SIR”) request just ahead of the March 16, 2013, extinction of the SIR program in an application involved in an interference. The interference is on appeal to the Court of Appeals for the Federal Circuit. The opinions are chiefly of interest, now that SIRs are no longer available, for the guidance they provide as to what the Board considers a ministerial function not prohibited by Loshbrough v. Allen, 359 F.2d 910 (CCPA 1966) (jurisdiction attaches in strict sense when notice of appeal is filed; nevertheless, a PTO board may exercise a purely ministerial function after filing the notice of appeal). The opinions are:
· Thomas v. Pippin, No. 105,801 (24 April 2013) (Paper 99)
· Thomas v. Pippin, No. 105,801 (6 March 2013) (Paper 97)