PTAB Continues to Tightly Manage Parties’ Filings

In Sony Corporation v Tessera, Inc., IPR2012-000333, Paper 13, (January 22, 2013) that PTAB denied Sony leave to file two Tessera-authored documents from the parties pending litigation, although Tessera questioned their relevance, it did not expressly object to their filing.  The PTAB did not see the relevance to whether a proceeding should be instituted, but did indicate that Sony could submit the documents if and when the trial was instituted.

The PTAB Provides Guidance for Filing Motions Pro Hac Vice

In Motorola Mobility LLC v. Arnouse, IPR2013-00010, Paper 6 (October 15, 2012), the PTAB provided guidance about filing motions pro hac vice.  Timing: The motion should be filed no sooner than 21 days after service of the petition, which is the time for filing the patent owner mandatory notices.  Content: The motion should contain (a) a statement of facts showing there is good cause to recognize counsel pro hac vice; and (b) a declaration from the counsel seeking to appear, attesting to: (i) member in good standing of at least one state bar; (ii) no suspensions or disbarments; (iii) no admission ever denied; (iv) no sanctions or contempt citations; and (v) that the individual will complywith the Office rules; and (vi) all other PTAB proceedings in which the movant has appeared in the last three years; and (vii) familiarity with the subject matter of the proceeding.

September 28, 2012 IPR2012-00022 Was Finally Accorded a Filing Date

On September 28, 2012 Ariosa Diagnostics’s IPR2012-00022 filed September 17, 2012, was finally accorded a filing date. Bbecause of discrepancies between the Exhibit List and the exhibits as filed, and because the petitioner’s applicable addresses (e-mail, postal and hand-delivery) and phone numbers were not included in the Petition, nor were the lead and back-up counsel clearly designated in the Petition, in accordance with 37 C.F.R. §42.8(b)(4) and §42.8(b)(3), the Ariosa was given one month to make corrections.

PRACTICE TIP: Make sure that you use the PTAB’s Exhibit Number Scheme, and remember that Mandatory Notices are in fact mandatory.

September 17, 2012, Five More IPR Filings

On September 17, 2012, Intellectual Ventures Management, LLC, filed IPR2012-00018 and IPR2012-00019 against Haynes and Boone, LLP on U.S. Patent Nos. 7,566,960 and 8,062,968, and IPR2012-00020 and IPR2012-00022 against  Xilinx, Inc. on U.S. Patent No. 8058897 and 7994609.  Ariosa Diagnostics filed IPR 2012-00022 against Isis Innovation Limited on U.S. Patent No. 6,258,540.

September 16, 2012, The First Five IPRs Filed

On September 16, 2012, Garmin International filed the first IPR, IPR2012-00001, against Cuozzo Speed Technologies LLC on U.S. Patent No. 6,778074.  Macauto U.S.A. filed IPR2012-00004 against Leydig, Voit & Mayer, Ltd. on U.S. Patent No. 6,422,291.  Nichia Corporation filed IRP2012-0005 against Emcore Corporation on U.S. Patent No. 6,653,215.  Illunina, Inc, filed IPR2012-00006 and IPR2012-00007 against the Trustees of Columbia University in the City of New York on U.S. Patent Nos. 7,713,698 and 7,790.869.