Following Denial of Motion for Joinder, IPR Petition Denied

Authored by A. Antony Pfeffer

As we noted earlier this week, the PTAB denied NetApp’s motion to join its petition for IPR (2013-00319), with EMC Corporation’s earlier IPR (2013-00082). See IPR 2013-00319, No. 18 (P.T.A.B. July 22, 2013). Now, the PTAB has declined to institute IPR 2013-00319 under its “discretion under 35 U.S.C. § 314 and 37 C.F.R. § 42.108(b).” See IPR2013-00319, No. 19 (P.T.A.B. July 25, 2013).

Remember, NetApp’s IPR petition was filed more than one year from service of a complaint, so would be barred under 35 U.S.C. § 315 but for the motion for joinder that accompanied the petition. However, this motion for joinder was subsequently denied by the PTAB. The decision to not institute the IPR does not squarely address the issue of whether in certain circumstances it would be permissible to institute an IPR requested more than one year from the service of a complaint following the denial of a motion for joinder.

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Motions to Amend and Substitute Claims in an Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

After the Patent Trial and Appeal Board (“the Board”) institutes a trial for inter partes review, the patent owner has an opportunity to amend/substitute the challenged claims through a motion to amend. The Board recently issued a decision on a motion to amend that appears to be intended to provide guidance on how the Board will analyze such motions, and the general requirements of such motions. See IPR2012-00027, No. 26 (P.T.A.B. June 11, 2013).

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Third Party Motion for Joinder of IPR Denied

Authored by A. Antony Pfeffer

NetApp, Inc. was served with a complaint alleging infringement of U.S. Patent 5,978,791 on December 6, 2011, but did not file an IPR within one year. However, an IPR on this same patent had been filed by EMC Corporation and VMware Inc (IPR2013-0082), and trial was instituted on May 17, 2013. NetApp then filed an IPR (IPR2013-0319) on May 30, 2013 along with a motion for Joinder to the -0082 IPR. This IPR was similar to the earlier -0082 IPR but added an additional claim to the IPR (claim 35). According to the motion for joinder:

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Decision on Rehearing of First CBM To Wait A Little Longer

Authored by: A. Antony Pfeffer

The PTAB has, without request from SAP, provided SAP an opportunity to respond to new issues, specifically the effect of recent Federal Circuit decisions on the decision in CBM 2012-001.

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The One Year Window for Filing of IPRs under 35 U.S.C. §315(b). Does the Window Ever Reopen?

Authored by A. Antony Pfeffer

Issues related to how the laws and regulations regarding IPR practice will be applied continue to be fleshed out at the PTAB. Apple has now raised to the PTAB the issue of how the one year window for the filing of an IPR under 35 U.S.C. §315(b) should be applied.

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