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March 17, 2017Newsletter

This Week at the Board - March 17, 2017

PTAB Grants Motion for Joinder

In IPR2016-01671, the Board granted a Motion for Joinder. The Board found that the Petition challenged the same claims of the same patent, and that the Petition also asserted the same grounds of unpatentability based on the same prior art and the same evidence, including the same declaration testimony. The Patent Owner asserted that the Petitioner failed to identify why it could not have included the arguments and grounds in its earlier filed petition, and that granting the joinder would give the Petitioner a “second bite at the apple.” Additionally, the Patent Owner asserted that the one-year deadline may be extended, which would prejudice the Patent Owner. The Board noted, however, that the extension of the one-year deadline was only speculative, and thus Patent Owner did not show any actual evidence of prejudice. Additionally, the Board noted that joinder is made on a case-by-case basis. Thus, even though the Petitioner could have raised the grounds in the earlier filed inter partes review, the Board found that the totality of the circumstances weighted in favor of granting the joinder, particularly because the grant would help “secure the just, speedy, and inexpensive resolution” of the proceedings.  

A link to the PTAB’s Decision is provided here.

PTAB Grants Request for Reconsideration

In IPR2016-00647, the Board granted a Request for Reconsideration, agreeing with the Petitioner that the Board had overlooked or misapprehended Fig. 3 of the raised prior art reference in the Institution Decision, instead focusing on FIG. 7. In particular, the Board had not sufficiently credited the process carried out in FIG. 3, and that based upon the agreed upon claim construction, it was more likely than not that the process in FIG. 3 met the claim limitation.  

A link to the PTAB’s Decision is provided here.

Federal Circuit Denies Petition for Mandamus Relating to Estoppel

The Federal Circuit recently issued an order denying mandamus relief to a Patent Owner, after a district court had denied Patent Owner’s motion to strike certain invalidity grounds based on the estoppel provision in § 315(e)(2). In the underlying inter partes reviews, certain grounds had been raised but were not instituted. Patent Owner asserted that under Shaw Industries (817 F.3d 1293 (Fed. Cir. 2016)), the district court should prohibit the Petitioner from raising those invalidity grounds in district court because of the estoppel provision in § 315(e)(2). Patent Owner asserted that Shaw established only a limited exception to § 315(e)(2), where the Board had declined to review on redundancy grounds without performing any substantive analysis of the references. The district court declined to adopt the Patent Owner’s narrow understanding of Shaw, and allowed the Petitioner to raise the grounds in district court. The Federal Circuit noted that a writ of mandamus is a “drastic and extraordinary remedy” that is appropriate only in “exceptional circumstances.” The Federal Circuit concluded that the Patent Owner’s right to relief in this matter was not clear and indisputable, and that the current state of the binding precedent does not compel a finding that the district court clearly abused its discretion.       

A link to the Federal Circuit’s Order is provided here.

PTAB Authorizes Petitioner’s Motion to File a Corrected Declaration and Denies Patent Owner Motions in Joint Conference Call

In a recent order on the conduct of the proceeding for IPR2016-01491, the Board authorized the Petitioner’s proposed motion to file a corrected declaration and denied several of the Patent Owner’s proposed motions following a joint conference call with the parties. More specifically, the Board did not authorize the Patent Owner’s motion to file an opposition to the Petitioner’s Request for Rehearing, a motion to file a certificate of correction to amend one of two descriptions of a figure in the contested patent, and two motions to file new evidence of record. In contrast, the Petitioner was able to persuade the Board to authorize their motion to file a corrected declaration of their expert witness. The Petitioner’s initial declaration was objected to by the Patent Owner because it was not made under oath or affirmed under penalty of perjury. Therefore, the Petitioner sought to correct the declaration to contain a signature of the Declarant affirmed under penalty of perjury, but no more. In authorizing the motion, the Board stated that the corrected declaration would remain substantively the same such that the correction did not materially affect the institution decision and noted that two separate panels of judges in related IPR cases had authorized the same motion. 

A link to the PTAB’s Order is provided here.

PTAB Denies Request for Authorization to File a Certificate of Correction in Final Written Decision

In a recent Final Written Decision for IPR 2015-01839, the Board notably denied the Patent Owner’s Motion Requesting Certificate of Correction. In the Motion Requesting Certificate of Correction, the Patent Owner sought to correct the dependency of a claim, change the recitation of “programmed” to “preprogrammed’ in the claim, and change the recitation of “preprogrammable” to “programmable” in another claim. The Petitioner opposed this motion because correction was only sought after institution of the IPR and because the correction broadened the claim. The Board agreed with the Petitioner, but noted that their decision did not preclude the Patent Owner from filing a request for a certificate of correction after the completion of the IPR proceeding. 

A link to the PTAB’s Decision is provided here.

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