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July 15, 2016Newsletter

This Week at the Board - July 15, 2016

Paying Members of Unified Patents Inc. are Not Real Parties-In-Interest

In IPR2016-00364, the Patent Owner asserted that the paying, subscribing members of the Petitioner (Unified Patents Inc.) should be considered real parties-in-interest, and that the Petitioner failed to identify all of the real parties-in-interest in its Petition. However, the PTAB disagreed, noting that “the mere fact that members provide payment to Unified Patents Inc. for a subscription to Unified’s services is insufficient to show that these members are funding this particular inter partes review.” There was no evidence of an obligation on Unified’s part to fileinter partes review proceedings on behalf of any particular member in return for payment, nor was there evidence that the subscribing members had any control over the inter partes review.

PTAB Issues Amended Decision to Institute After Granting Patent Owner’s Request for Rehearing

In IPR2016-00326, the PTAB granted the Patent Owner’s Request for Rehearing. In its Request, the Patent Owner argued that the PTAB had overlooked a number of matters rendering rehearing necessary. The PTAB agreed and withdrew its initial Decision to Institute in order to reconsider the Decision in light of the full record.  After reconsidering the full record, however, the PTAB was still of the opinion that the Petitioner had shown a reasonable likelihood of prevailing with respect to the challenged claims. Accordingly, the PTAB issued an Amended Decision to Institute addressing the full record as requested by the Patent Owner in the Request for Rehearing.

PTAB Grants Additional Pages and Time in Patent Owner Response to Antedate Prior Art Reference

In a recent order in IPR2016-00258, the PTAB granted the Patent Owner additional pages and time for its Response to argue whether or not the Patent Owner can antedate a reference that qualifies as prior art under § 102(e). In the conference call with the PTAB, counsel for the Patent Owner sought authorization to file a motion to antedate the prior art reference or, in the alternative, an additional 20 pages for the Patent Owner Response to antedate a PCT filing date and/or a provisional filing date of the reference. In the same call, the Petitioner did not oppose the request for 20 additional pages in the Patent Owner Response and requested its Reply be given the same number of additional pages allotted to the Patent Owner Response. The PTAB complied with the Patent Owner’s request, ordering that the Patent Owner be accorded 10 additional pages to antedate the PCT filing date or 20 pages to antedate the PCT and provisional filing date, and also giving the Patent Owner a one-week extension to file the Patent Owner Response. The PTAB also ordered that the Petitioner is accorded 10 additional pages in its Reply for the purpose of addressing the Patent Owner’s attempt to antedate the PCT while reserving the right to grant additional pages if the Patent Owner attempts to antedate the PCT and the provisional filing date. 

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