In ACCO Brands Corporation v. Fellowes, Inc., IPR2013-00566, Paper 16 (April 18, 2014), Fellowes sought additional discovery related to secondary considerations.  The Board denied the discovery, explaining:

The legislative history of the AIA makes clear that additional discovery should be confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).

The Board also pointed out that the statutory standard for permitting additional discovery is “necessary in the interest of justice.” 35 U.S.C. § 316(a)(5).  Finally, pointing out that there is a one-year statutory deadline for completion of inter partes review, the Board said that given the statutory deadlines imposed by Congress and with the limited nature of additional discovery in inter partes review proceedings, the Board will be conservative in authorizing additional discovery, citing154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl) (“Given the time deadlines imposed on these proceedings, it is anticipated that, regardless of the standards imposed in [sections 316 and 326], PTO will be conservative in its grants of discovery.”)

New FIlings

Endo Pharmaceutical Inc. filed IPR2014-00651 challenging U.S. Patent No. 6,723,340, assigned to DEPOMED, INC.

Endo Pharmaceutical Inc. filed IPR2014-00652 challenging U.S. Patent No. 6,723,340, assigned to DEPOMED, INC.

Hyundai Motor Company filed IPR2014-00657 challenging U.S. Patent No. 7,413,048, assigned to American Vehicular Sciences LLC.

Hyundai Motor Company filed IPR2014-00658 challenging U.S. Patent No. 7,976,060, assigned to American Vehicular Sciences LLC (Assignee)

Hyundai Motor Company filed IPR2014-00659 challenging U.S. Patent No. 8,235,416, assigned to American Vehicular Sciences LLC (Assignee)

In Texas Instruments Incorporated, v. Unifi Scientific Batteries, LLC, IPR2013-00213, Paper 27 (April 17, 2014), the Board said that:

A motion to strike is not, ordinarily, a proper mechanism for raising the issue of whether a reply or reply evidence is beyond the proper scope permitted under the rules.

The Board explained that in the absence of special circumstance, the Board determines whether a reply and supporting evidence contain material exceeding the proper scope when it reviews all of the pertinent papers and prepare the final written decision. The Board may exclude all or portions of Petitioner’s reply and newly submitted evidence, or decline to consider any improper argument and related evidence, at that time.

This is consistent with the advice the Board gave a week earlier in in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), and ABB Inc. v. Roy-G-Biv Corp., IPR2013-00074 and IPR-00286, Paper 80 (April 11, 2014), where the Board said that if an issue arises regarding whether a reply argument or evidence in support of a reply exceeds the scope of a proper reply, the parties should contact the Board to discuss the issue.  At least this way the party can alert the Board to the issue.

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.