Another Unsuccessful Request for Rehearing

In Nissan North America, Inc. v. Collins, IPR2012-00035, Paper 28 (January 29, 2013), the PTAB denied Nissan’s request for a rehearing related to the PTAB’s Order (Paper 24) regarding ex parte contacts.  The Board rejected Nissan’s arguments that it was acting on PTAB’s advice, noting that Nissan did not in fact follow the alleged advice.  The PTAB further noted that an ex parte contact cannot be made proper simply by requesting a conference call somewhere within the communication.  Finally the PTAB rejected the argument that the patent owner likewise acted impropertly, first noting that that did not change the fact that Nissan acted improperly, and that the patent owner’s communications were different in nature.

January 29, 2013, Three New IPRs Filed

On January 29, 2013, Intelligent Bio-Systems, Inc., filed IPR2013-00128 on U.S. Patent No. 7,057,026 on Labelled Nucleotides.  Komatsu America Corp. filed IPR2013-00129 and IPR2013-00130 against U.S. Patent No. 7,039,507 on Apparatus for Tracking and Recording Vital Signs and Task-Related Information of a Vehicle to Identiy Operating Patterns.  This is another instance where a Petition felt it needed two separate filing against a single patent to get the job done.

Another Warning About Ex Parte Contacts

Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBMR2012-00010, Paper 14 (January 24, 2013) Per 37 CFR 42.5(d), The PTAB again reminded us that all substantive communications with the PTAB must include all parties to the proceeding. A communication that identifies evidence and explains its irrelevance is a substantive communication.

In Search of the Real Party in Interest

In Intellectual Ventures Management LLC v Xilinx, Inc., IPR2012-000018, Paper 12 (January 24, 2013) the PTAB rejected Xilinx argument that Inter Partes Reviews should not be declared in  IPR2012-00018 (Patent 7,566,960), IPR2012-00019 (Patent 8,062,968), IPR2012-00020 (Patent 8,058,897), and IPR2012-00023 (Patent 7,994,609), finding that Xilinx has failed to sufficiently demonstrate that IVM has not named all real parties in interest for any of the four proceedings.

PTAB Holds First Pretrial Conference

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

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

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.