The Board granted a motion for joinder that was filed with a request for inter partes review. The motion for joinder sought to join the petition with a previously instituted inter partes review for the same patent, involving the same parties, and relying on overlapping prior art. Without joinder, the petition would have been otherwise time barred as being filed more than one year after being served with a complaint asserting infringement of the subject patent.

The motions list for the initial conference call is not the motions themselves and should not contain detailed facts, arguments, and schedules. Instead, motions lists should provide a short, concise statement relaying enough information to understand the proposed motion. A motions list not complying with these procedures may result in dismissal or expungement of the list.

A petitioner is barred from filing a petition for inter partes review “if, before the date on which the petition for such review is filed, the petitioner . . . filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315 (a). The Board held that filing a civil action for declaratory judgment of non-infringement is not a civil action challenging the validity of a patent, even when the patent owner files a counterclaim of infringement and the petitioner responds to that counterclaim by asserting an affirmative defense of invalidity.

After the initiation of a trial, the Petitioner and the Patent Owner may submit a request to terminate the inter partes review proceedings under 37 C.F.R. § 42.72. 35 U.S.C. § 317 provides that “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” 35 U.S.C. § 317(a) (emphasis added). Further guidance may be found in the Office Patent Trial Practice Guide (77 Fed. Reg. 48756, 48768 (August 14, 2012)). A settlement agreement must be in writing and filed in the Office before termination of a trial. If requested by a party, the agreement shall be treated as business confidential and kept separate from the file of the involved patents.

A petition for inter partes review may not be filed “more than one year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). The Board held that this time period begins when the petitioner is served with a summons, and not the date of the complaint or mere notice of the complaint. Where service is waived under Federal Rule of Civil Procedure 4(d), the one-year time period begins on the date when the waiver is filed.

To challenge a petitioner’s identification of all real parties in interest, the patent owner should address at least the factors identified the Trial Practice Guide. These factors include whether a non-party exercises control over a petitioner’s participation and if a non-party is funding or directing the proceeding. The patent owner cannot merely rely on disclosures provided in a litigation under Federal Rule of Civil Procedure 7.1 and similar local rules, particularly where neither party has identified that litigation as a related matter to the inter partes review.

The Board’s exclusive jurisdiction under 37 C.F.R. § 42.3(a) extends to the patent or application that is the subject the proceeding and not to patents that are in the same family. Specifically, the Board declined to exercise jurisdiction over patent applications, currently pending before the USPTO, that are divisional applications of the patent that is the subject of inter partes review.

The Board may recognize counsel pro hac vice upon a showing of good cause and with lead counsel a registered patent practitioner. 37 .C.F.R. § 42.10(c). The Patent Owner demonstrated good cause by showing, among other things, that counsel seeking to appear was an experienced litigator having an established familiarity with the subject matter at issue in the proceeding. Specifically, counsel was the lead counsel in six district court actions involving the same patent at issue in the post-grant review of the covered business method patent.

Patent Owner’s motion for additional discovery was granted in part and denied in part for being overly broad. Patent Owner argued that five documents, and their exhibits and appendices, were relevant to the proceeding and should be produced. The Board asked Petitioner to explain why they would be prejudiced by providing the five documents. In response, Petitioner did not identify why they would be prejudiced, but rather argued that the documents were irrelevant. Patent Owner disagreed, arguing that the documents related to issues of validity. The Board agreed with Patent Owner, and ordered the five documents produced. However, the Board required Patent Owner to specifically identify which exhibits and appendices they required and to identify the relevance of those identified documents.

A party filing a motion for pro hac vice admission must “provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear.” The Board denied Versata’s motion for pro hac vice admission of its counsel, Mr. Cole. The Board explained that Versata failed to show there is good cause for Mr. Cole’s admission as its motion and Mr. Cole’s declaration did “not address or mention the district court’s finding of a pattern of protective order violations in the related litigation for which Mr. Cole was lead counsel.”

The Board exercised its discretion and ordered to stay a concurrent reexamination, pending the termination or completion of the inter partes review. Four of the five Petitioners were also the third-party requesters who filed the request for reexamination, the Petitioners asserted the same grounds of challenge based on the same prior art in the inter partes review as some of those rejections adopted by the Examiner in the reexamination. However, all of the claims being challenged in the inter partes review were different than those claims subject to reexamination.

The Board reasoned that even though it will not ordinarily stay a reexamination, “[c]onducting the reexamination concurrently with the instant proceeding . . . would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.” Further, “[a]ny Board decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.”

In a petition for inter partes review, a petition must clearly explain “how the teachings of multiple references are used in combination to meet a claim feature” and “what the differences are between the subject matter claimed in a claim alleged as obvious over prior art, and the prior art.” The Board denied the grounds that did not meet these requirements. The Board resolves all vagueness and ambiguity in Petitioner’s arguments against the Petitioner.

Multiple grounds in a petition for inter partes review, “which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them . . . are not all entitled to consideration.” The Board held that the grounds are redundant when (i) a plurality of prior art references are applied not in combination to complement each other but as distinct and separate alternatives or (ii) a base ground already has been asserted against the same claim without the additional reference, and the relative strength and weakness of each ground has not been explained by the Petitioner. Just one ground should be asserted if there is no difference between the multiple grounds.

Patent Owner’s motion for additional discovery of was granted in-part and denied in-part. Additional discovery is permitted in an inter partes review proceeding where “necessary in the interest of justice.” The Board determines whether that standard has been met by looking to five factors: (1) whether the requesting party has produced evidence that shows beyond speculation that something useful will be uncovered; (2) whether the request is for litigation positions and the underlying basis for the positions; (3) whether the requested information can be reasonably figured out by the requesting party without additional discovery; (4) whether the questions posed in the discovery request are easy to understand; and (5) whether the requests are not overly burdensome to answer.

The Board found that Patent Owner had met the requisite standard with respect to the requested laboratory notebooks and other documents relating to the creation and testing of prior art compositions, especially in light of the fact that Petitioner did not present any argument that factors 2-4 had not been met. Notably, however, Patent Owner argued that this information should have been produced as part of routine discovery. The Board disagreed; pointing out that mere reference to experiments in a paper does not require that all underlying data and lab notebooks be produced with that paper.

With respect to the requested test samples and any testing results inconsistent with Petitioner’s asserted position in their petition, the Board denied Patent Owner’s request. The Board found that Patent Owner had not shown that it could not create the identified samples themselves, and did not explain why they could not gather the information they seek from the laboratory notebooks. With respect to the inconsistent positions, the Board found that Patent Owner had not demonstrated why this information is necessary and why it would not be unduly burdensome to Petitioner to produce.