In IPR2012-00035, on January 22, 2013, the Patent Trial and Appeals Board ("PTAB") (A.P.J.s Lane, Robertson and Guest) issued an order concerning an ex parte email sent by Petitioner Nissan North America, Inc. ("Petitioner"). According to the Petitioner's email, in its Preliminary Response the Patent Owner made arguments based on an obvious mathematical error, e.g., stating that .5 microns is 500 angstroms when it actually is 5000 angstroms. In its ex parte email, the Petitioner asked for the proper procedure for requesting the Board to take judicial notice of this "false statement."
In its Order, the PTAB expressed concerned about the manner and content of the Petitioner's ex parte email to the Board:
The error asserted by Nissan is not the subject of this Order. Instead it is the manner and content of the Nissan email that are of concern. It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so. It is even more troubling that Nissan did so without providing Collins with a copy of the email. Communications with a Judge or other Board member regarding a specific proceeding is not permitted unless both parties have an opportunity to be involved in the communications. 37 CFR 42.5(d). The Practice Guide notes certain exceptions to the prohibition, e.g., where a party seeks to arrange a conference call. The Nissan email does not fall into any of the listed exceptions.
The Board explained that merely asking for a conference in the ex parte communication did not cure the improper nature of the communication. It further advised that if there is any doubt about the propriety of the communication, then the party should at least copy opposing counsel.
The Board further explained that even if opposing counsel had been copied in this instance, the email remained improper because the email contained arguments responding to the Patent Owner's Preliminary Statement. No reply is permitted to a Patent Owner's Preliminary Statement. Under 37 CFR 42.71(d)(1), a Petitioner only may request a rehearing if it is dissatisfied with the Board's decision on the petition. Thus, the Board viewed the Petitioner's email as an improper attempt to reply to issues raised in the Patent Owner's Preliminary Statement.
Like other initial decisions from the Board, this decision addresses an issue of procedure related to litigating before the PTAB. While the Petitioner's argument that it was merely following the Patent Owner's prior example of sending an ex parte communication to the Board appears accurate (see Paper No. 25), one significant difference between the two ex parte emails is that the Patent Owner's email did not contain any arguments that went to the substantive issues raised in the petition while the Petitioner's email identified errors going directly to the arguments presented in the Patent Owner's Preliminary Response.
Nissan North America, Inc. v. Collins, et al., IPR2012-00035, Paper No. 24 (January 22, 2013) (J. Lane).
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