Articles Posted in Inter Partes Review

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Plaintiff e-Watch, Inc. filed a patent infringement action against several defendants, including Defendant FLIR Systems, Inc. (“FLIR”). FLIR filed a motion to stay pending an inter partes review of the patent-in-suit by the Patent Office.

In deciding to grant the stay, the district court noted that the action was at an early stage and that the inter partes review could simplify the issues in the case. “This action is at a very early stage, and a stay could materially simplify the issues in the case if the United States Patent and Trademark Office (“USPTO”) decides to institute an inter partes review with respect to either of the patents at issue.”
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In a pair of recent decisions, the Patent Trial and Appeals Board further clarified the requirements of filing a motion to amend the claims. These recent decisions supplement the Board’s recent decisions in IPR2012-00027 (Paper No. 26) and IPR2012-00005 (Paper No. 27) in which the Board provided guidance regarding the filing of motions to amend claims.

On June 26, in Oracle Corporation v. Clouding IP, LLC, IPR2013-00099, the Board (APJs Chang, Kim and Elluru) issued a decision following the patent owner’s intention to file a motion to amend the claims. In the telephone conference on the patent owner’s motion, the Board noted “that Clouding would have to account for the level of ordinary skill in the art and the basic skill set possessed by one with ordinary skill, and may not limit its consideration to just the references over which this trial was instituted.” In other words, in its motion the patent owner must demonstrate that the proposed amended claims address the grounds of rejection in light of the level of ordinary skill of a person skilled in the art as well as over the prior art, including prior art that the Board did not rely upon in granting the petition.

The Board also noted that “when indicating written description support in the specification, [the patent owner] should make reference to the disclosure in the original applications as filed, rather than to the portions of the issued patent, and provide sufficient explanation in addition to citations to the specification.”

Finally, the Board explained that “should an expert declaration be submitted in support of a motion to amend claims, the motion itself should set forth the arguments and explanations with appropriate pinpoint citations to the expert declarations, rather than just incorporating by reference the expert declarations.”

In Synopsys, Inc. v. Mentor Graphics Corporation, IPR1012-00042, the Board (APJs Blankenship, Medley and Bisk) issued a decision on the patent owner’s motion to amend in which the Board dismissed the motion without prejudice because the patent owner failed to list the proposed amended claims in the body of the motion and instead listed them in an appendix. The Board stated that “by doing so, [the patent owner] circumvented the motion page limit [of 15 pages].
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Defendant Omron Oilfield & Marine, Inc. (“Omron”) filed a motion to stay pending an Inter Partes Review that it initiated against Plaintiff’s National Oilwell Varco, L.P.’s (“NOV”) patent-in-suit. The patent-in-suit, U.S. Patent No. 5,474,142 (the ‘142 patent), is directed to automatic drilling.

As the district court explained, “[o]n May 3, 2013, Omron opened up a second front in its legal battle with NOV, by filing a petition for inter partes review with the United States Patent Office. This review process, a relative novelty, is before a panel of three administrative patent judges, as part of the Patent Trial and Appeal Board (PTAB). 35 U.S. C §§6, 316(c). NOV has three months, from the date of Omron’s PTAB petition, to file a response, 37 C.F.R. § 42.107(b), and the PTAB in turn has three months after that to determine whether an inter partes review will proceed, 35 U.S.C. § 314(b). In other words, it will likely be five months before the Court or the parties even know if an inter partes review will actually occur here. If the PTAB grants review, by statute it must render a final determination within one year. Id. § 316(a)(11). The one-year period can be extended for a further sixth months upon a showing of good cause. Id. As such, there is a possibility the entire inter partes review process would take nearly two years. Even assuming the parties and the PTAB move expeditiously, the stay Omron seeks could easily last many months or a year, at least.”
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Plaintiff Automatic Manufacturing Systems, Inc. (“AMS”) manufactures and markets equipment used to print machine readable labels on glass microscope slides. Defendant Primera Technology, Inc. (“Primera”) competes against AMS in the glass-microscope-slide-printing-machine market. AMS owns U.S. Patent No. 8,013,884 (“the ‘884 patent”), The ‘884 patent is directed to a device that can print information onto the surface of a glass object and methods for doing so. On March 19, 2013, Primera filed a petition for inter partes review of the ‘884 patent with the United States Patent and Trademark office. Primera then moved to stay the case pending the outcome of the inter partes review.

As explained by the district court, “Defendant asks the Court to stay this litigation based upon the mere fact that it petitioned the USPTO to initiate an administrative proceeding called an inter partes review. This type of proceeding is relatively new. It was created by Congress in the Leahy-Smith America Invents Act (the “AIA”) in response to perceived deficiencies in an older administrative proceeding called an inter partes reexamination. See Universal Elecs., Inc., 2013 WL 1876459, at *1″
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In this two-part blog, the standards for seeking discovery are discussed in the context of a recent order in Garmin International, Inc. et al. v. Cuozzo Speed Technologies LLC, IPR2012-00001. In Garmin, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the patent owner’s (Cuozzo) request for additional discovery. In its order, the Board clarified what constitutes routine discovery and what constitutes additional discovery, including its explanation of the showing that must be made under the “interests of justice” standard for obtaining additional discovery.

Regarding routine discovery, the Board noted that the Board’s authorization is not required for a party to conduct routine discovery. The Board explained that “[u]nder 37 C.F.R. § 41.51(b)(1)(i), ‘[u]nless previously served or otherwise by agreement of the parties, any exhibit cited in a paper or in testimony must be served with the citing paper or testimony.’ Under 37 C.F.R. § 41.51(b)(1)(iii), ‘[u]nless previously served, a party must serve relevant information that is inconsistent with a position advanced by the party during the proceeding concurrent with the filing of the documents or things that contains the inconsistency’ [privileged information excepted].” Applying these standards, the Board ruled that Garmin was not required to produce the file histories for the prior art patents cited in its petition because it did not rely on those file histories and there was nothing in Cuozzo’s motion that suggested Garmin failed to comply with the routine discovery requirement under 37 C.F.R. § 41.51(b)(1)(iii). However, the Board did require that the parties confirm that they had complied with the routine discovery obligations of 37 C.F.R. § 41.51(b)(1)(iii).
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In IPR2012-00041, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Medley, Blankenship and Bisk) issued an order in Synopsys, Inc. (“Petitioner”) v. Mentor Graphics Corporation (“Patent Owner”) denying Synopsys’ petition. In its petition, Synopsys sought review of U.S. Patent No. 6,947,882 relating to systems for emulating integrated circuit designs. Synopsys argued that claims 1-14, 17-20 were anticipated and/or rendered obvious based on four prior art U.S. patents, one of which was incorporated by reference into one of the other three patents. Notably, the ‘882 patent is involved in concurrent litigation with a Markman hearing set for July 23, 2013 and a jury trial set for June 16, 2014.

In declining to institute an inter partes review of any of the challenged claims on any of the proposed grounds, the Board agreed with the Petitioner that the claims terms should be given their ordinary meaning, except for a single claim limitation. The exception, however, relates to the claim term “wherein clocking of the second time multiplexed interconnection is independent of clocking of the first time multiplexed interconnection.” About this term, the Board stated that the Petitioner implicitly asserts that the independent clock signal limitation encompasses asynchronous clock signals originating from a single clock. As explained below, however, the Board’s construction of this term in a manner different that the Petitioner’s implied definition turned out to be fatal to Synopsys’ petition for inter partes review.
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In IPR2012-00022, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Tierney, Green and Robertson) issued an order in Ariosa Diagnostics (“Petitioner”) v. Isis Innovation Limited (“Patent Owner”) regarding Ariosa’s standing. Section 315 specifies that “[a]n inter partes review may not be instituted if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Notably, however, Section 315 exempts the filing of a counterclaim challenging the validity of a claim of a patent from the definition of a “civil action.” 35 U.S.C. § 315 (a)(3). The issue presented here is whether raising the defense of invalidity in an affirmative defense falls with the definition of a “civil action” under Section 315.
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In IPR2013-00078, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Medley, Easthom and Siu) issued an order in International Business Systems Corporation (“Petitioner”) v. Financial Systems Technology (Intellectual Property) Pty. Ltd. (“Patent Owner”) regarding the settlement between the parties and procedure regarding the termination of the procedure. The Petitioner filed its petition on December 12, 2012 and the Patent Owner’s preliminary response would have been due on March 17, 2013.

Before the filing of the Patent Owner’s preliminary response and any subsequent Board decision on the petition, the parties entered into a written settlement agreement contemplating the dismissal of a co-pending district court lawsuit and the termination of the inter partes review proceeding. As a result, the parties sought guidance regarding the filing the settlement agreement and terminating the IPR proceeding.
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In IPR2012-00001, on January 25, 2013, the Patent Trial and Appeals Board (“PTAB”) (A.P.J.s Lee, Tierney and Cocks) issued an order regarding the conduct of proceedings (“Order”) in Garmin International, Inc. v. Cuozzo Speed Technologies, LLC. The Order followed a conference call to discuss any issues the parities may have about the Scheduling Order and the trial procedure. Of interest, the Board clarified the following issues:

  • The Federal Rules of Civil Procedure does not generally apply to this proceeding
  • Any proposed amendment or substitution of claims must explain how it obviates the ground of unpatentability underlying the institution of the IPR and where the corresponding description support in the specification can be found
  • The explanation should be contained in the motion to amend the claims which is separate from the Patent Owner’s Response
  • The motion to amend the claims should not make any change to claims which are not involved in the proceeding
    Finally, the Board denied the Patent Owner’s request to file a motion for joinder of Chrysler Corporation and JVC Inc. which are allegedly “privies” to the Petitioner on the grounds that the Patent Owner could not represent that either is currently a petitioner in a pending Inter Partes Review involving the patent-at-issue.
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