In Tandus Flooring, Inc. v. Interface, Inc., IPR2013-00333, Paper 38 (April 16, 2014), the Board gave an encore of the myriad of requirements to file a successful motion to amend, something no patentee has been able to accomplish.

In Toyota Motor Corporation v. LeRoy G. Hagenbuch, IPR 2013-00483, Paper 21 (April 16, 2014), the patent expired during the inter partes review, as a result the parties and the Board agreed that “broadest reasonable interpretation” was no longer appropriate.  (This mirrors the treatment in reexamination where because expiration of the patent means that the claims can no longer be amended, broadest reaasonable interpretation is no longer appropriate).  The Board which had instituted the Inter Partes Review based upon the broadest reasonable interpretation of the claim term monitoring: “monitoring” namely, “watching, keeping track of, or checking.”  The Board was now forced to construe the term “monitoring,” which it determined meant: “watching or keeping track of, or checking.”  At least in this case the interpreation and the broadest reasonable interpretation were exactly the same!

Athrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-00632, Paper 23 (April 16, 2014), petitioner moved to joint IPR2014-00632 with IPR2014-00633 to avoid any estoppel effect if a decision is renedered in one proceeding before the other. The patent owner opposed the motion, arguing that petitioner made a tactical decision to file two petitions, and cannot claim prejudice from the result of its decisions.  The Board denied joinder, finding the harm speculative because the proceedings are synchronized.  The Board further noted that although the cases involve the same patent and claims, the prior art is not identical, and the exhibits for each case are not consistently numbered, so joining the two cases would require renumbering and relabeling some of the exhibits. Finally, the Board noted that the parties can avoid duplication of work common to both cases by agreeing to, e.g., depose each expert witness one time for both cases.

In Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2014-00114, Paper 4, April 15, 2014), petitioner sought a stay of co-opending inter partes reexamination, in view of the covered business method review that it filed.   The Board denied the stay as premature because it had yet to determine whether to institute a covered business method patent review of the patent.  The Board indicated that petitioer could renew its motion if a covered business method patent review is instituted.

In GEA Process Engineering, Inc. v. Steuben Foods, Inc., (IPR2014-00041), Paper 22 (IPR2014-00043), Paper 23, (IPR2014-00051), Paper 21 (IPR2014-00054), Paper 18 (IPR2014-00055), Paper 14 (April 15, 2014), the patent owner believed that it had engaged petitioner’s expert before petitioner, and sought to get petitioner to produce documents that the patent owner provided to the expert.  The Board explained that the Office does not have authority to issue a subpoena for the production of documents. Production of documents is compelled through a subpoena from a United States District Court, pursuant to 35 U.S.C. § 24:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena.

The Board said that Section 42.52 provides procedures for compelling the production of documents. 37 C.F.R. § 42.52. Section 42.52(a) requires the party seeking to compel production of documents to first obtain authorization from the Board; otherwise, the compelled evidence will not be admitted in the proceeding:

§ 42.52Compelling testimony and production.

(a)Authorization required. A party seeking to compel testimony or production of documents or things must file a motion for authorization. The motion must describe the general relevance of the testimony, document, or thing, and must:

(1) In the case of testimony, identify the witness by name or title; and

(2) In the case of a document or thing, the general nature of the document or thing.

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In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 34 (April 14, 2014), the patent owner filed observations on cross-examination that exceeded the 15 pages permitted by 37 C.F.R. § 42.24(a)(1)(v).  The Board expunged the filing, and gave the patent owner two days to file a substitute, limited to removing material from the original paper and not making any substantive changes or additions.

In Amkor Technology, Inc. v. Tessera, Inc., IPR201-00242, Paper 117, (April 14, 2014), the patent owner filed a terminal disclaimer of the remainder of the patent term (which was going to expire later in the year), to force the Board to apply the construed meaning of the claims, instead of the broadest reasonable interpretation (arguing that expiration of the patent prevented use of the BRI).  The patent owner believed that when the contrued meaning is applied, the inter partes review should be terminated.  The Board authorized the parties to brief the issues.