PTAB Holds First Pretrial Conference

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On January 22, 2012, the PTAB held the very first Pretrial Conference in an IPR in Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026.  The next day, the PTAB issued an order Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 22 (January 23, 2013), summarizing the matters discussed, which included:

  1. The Petitioner’s submission of evidence in response to objection by the patent owner (which was premature and will be expunged).
  2. The Scheduling, which may be changed if the proceedign in joined with a subsequently filed Petition
  3. The Protective Order
  4. Additional Discovery
  5. Motions
  6. Petitioner’s request for reconsideration
  7. Settlement
  8. Other Matters, including co-pending litigation, oral arguments, and the availability of Petitioner’s Expert.

 

The PTAB Actively Polices Improper Ex Parte Contacts

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In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 24 (January 22, 2013), the PTAB rebuked Nissan for an ex parte email that it send to a Judge asking to “know the proper procedure for requesting judicial notice of [a] false statement.”  The email included substantive arguments regarding the patent owner’s preliminary response.  In addition to admonishing Nissan, the PTAB allowed the patent owner the chance to responde to the email.

PRACTICE TIP: Do not make ex parte conctacts with the PTAB except to set up a conference call, and do not include substantive infomrtion or argument in such a request.

PTAB Continues to Tightly Manage Parties’ Filings

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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

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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

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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.