In Apple Inc. v. Benjamin Grobler, IPR2014-00060, Paper 16 (April 8, 2014), Apple filed a request for rehearing of the denial of inter partes review, and Grobler without permission, filed a reply. The Board noted that the patent owner did not obtain authorization from the Board to file its Reply, and therefore “the Board will not consider the Reply and the Reply will be expunged. 37 C.F.R. § 42.7(a)”. All’s well that ends well, however, in Paper 15 the same day, the Board denied Apple’s request for rehearing.
Author Archives: Bryan Wheelock
Replies Must only Reply
In Veeam Software Corporation v. Symantec Corporation, IPR2013-00141. Paper 35 (April 7, 2014), the petitioner complained that the patent owner’s repies to petioner;s opposition to the motion to amend because they exceeded the scope of the opposition. The Board reminded the parties:
The scope of a reply is limited. A reply may only respond to arguments raised in a corresponding opposition. 37 C.F.R. § 42.23(b). A reply is not an opportunity to raise new issues or provide additional evidence that could reasonably have been provided in the motion. A reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.
The board expunged the replies, but did give the patent owner five days to try again.
Board Declines to Make Evidentiary Rulings Before the Final Written Opinon
In Sony Corporation v. Yissium Research Development Company of the Hebrew University of Jerusalem, IPR2013-00218, Paper 35 (April 7, 2014) and IPR2013-00219, Paper 41 (April 7, 2014), the patent owner sought an early ruling whether the petitioner;s response and expert declaration should be excluded for improperly raising new issues. The Board did not want to engage on the matter, however, noting that a ruling on the evidentiary objection at this stage is premature. Whether a reply contains arguments or evidence that is outside the scope of a proper reply under 37 C.F.R. § 42.23(b), is left to theultimate determination of the Board,, which it will address in final written decision.
April 7, 2014
New Filings
Digital Empire Limited filed IPR2014-00584 challenging claims 1-12 of U.S. Patent No. 7,864,503, assigned to Hilltop Technology LLC.
IBM filed IPR2014-000587 challenging claim 1 of U.S Patent No. 6,826,694, assigned to Intellectual Ventures II LLC.
1000 Petitions!
As of April 4, 2014, more than 1000 petitions for inter partes review have been filed. Since the first day, inter partes reviews have taken off with a steady stream of patent challenges:
How have these petitions been disposed of? About 81% of them are still pending, 11% were not instituted, 4% settled after institution, and 4% have ended in final written decisions.
Of the 11% (108) Petitions that have not resulted in the institution of trial, 41% (44) were denied on the merits, 23% (25) were denied as time-barred, 31% (33) were settled, and 4% (4) were abandoned by the patent owner.
Motions to Strike Aren’t Necessary (or Are They)?
In Apple Inc. v. SightSound Technologies LLC, CBM2013-00023, Paper 61 (April 2, 2014) the Board denied patent owner’s request for permission to file a motio to strike the Petitioner’s reply for new arguments not responsive to the arguments the patent owner made in its response, and to strike portions of Petitioner’s declaration for improperly containing legal argument. In both instances, the Board said that in most cases it is capable of identifying and exclusing improper arguments and testimony. However, merely asking for permision probably sensitized the Board to the issue.
Second Chance on Motion to Amend
In Volusion, Inc. v. Versata Development Group, Inc., CBM2013-00018, Paper 31 (April 4, 2014), the Board gave the patent owner a rare second chance, allow it to make a second motion to amend correcting some errors in the amended claims from the first motion to amend.
April 4, 2014
New Filings
Microsoft Corporation filed IPR2014-00574 and IRP2014-00575 challenging U.S. Patent No. 6,151,604 assigned to LJM Software, Inc., and IPR2014-00576 and IPR2014-00577 challenging U.S. Patent No. 6,163,775 assigned to LJM Software, Inc.
Terminations of Proceedings
in Cannon, Inc. v. Yama Capital, LLC, IPR2014-00015, Paper 17 (April 4, 2014), the Board terminated the proceedings prior to a decision to institute, because of a settlement between the parties.
April 3, 2014
New Filings
Nelson Products, Inc, filed IPR2014-00572 challenging U.S. Patent No. 8,297,662, and IPR challenging U.S. Patent No. 8,297,662, and IPR2014-00573 challenging U.S. Patent No. 8,375,543.
Termination Decisions
In GTech Corporation v. SHFL Entertainment, Inc., CBM2014-00048, Paper 20 and CBM2104-00049, Paper 23 (April 3, 2014), the Board terminated the Proceedings in view of the parties settlement, noting that a trial had not even been instituted.
Keeping Other People’s Secrets: Motions to Seal
In Corning Gilbert Inc. v. PPC Broadband, Inc., IPR2013-00347, Paper 32, IPR 2013-00340, Paper 34 (April 3, 2014), the Board instructed the parties two try again to resolve their issues before it ruled on their motions to seal. The Board remindered the parties that determining a motion to seal involves striking a balance between the public’s interest in maintaining a complete and understandable file history and the parties’ interest in protecting truly sensitive information. See Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). A proper Motion to Seal must address the public’s interest in that regard, and should not end with merely establishing that the information sought to be sealed is confidential business information.