BOS GmbH Files First Preliminary Response by Patentee in Inter Partes Review

Scott Daniels | December 27, 2012

A Preliminary Response was filed yesterday (under 35 U.S.C. § 313) by the patent owner in Macauto USA v. BOS GmbH, IPR2012-00004.  In September Macauto USA had requested inter partes review of BOS’s U.S. Patent No. 6,422,291 claiming a mechanism for car window shades.  In yesterday’s Response, BOS asked that the Patent Office decline to institute the requested inter partes review.

BOS’s Preliminary Response will interest practitioners, first because it asks the APJs to consider the question of who is a “real party in interest.”  More generally, the APJ’s analysis of BOS’s Response is likely to reveal how closely they will scrutinize IPR Requests to determine of whether there is “a reasonable likelihood” that the Petitioner would prevail in its challenge to at least one claim of the patent.

BOS first asserts that inter partes review should be denied under 35 U.S.C. § 315(b) because it sued Macauto Taiwan more than one year before the present Petition was filed.  Section 315(b) provides:

 An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

(Emphasis added).  Here, BOS contends that “Macauto Taiwan is a real party in interest or a privy of the petitioner, Macauto USA, because Macauto Taiwan wholly owns and controls the petitioner.”  BOS also argues that Macauto Taiwan will be affected, positively or negatively, by the results in this proceeding, pointing out that Macauto Taiwan had earlier pursued an unsuccessful ex parte reexamination of the BOS ‘291 patent.  BOS adds some spice to its argument by noting that none of these facts was disclosed in Macauto’s Petition.

Second, BOS maintains that inter partes review should be denied under 35 U.S.C. § 325(d) because the prior art references asserted in the Petition were already considered by the Patent Office in the original ‘291 patent prosecution and in Macauto Taiwan’s earlier unsuccessful ex parte reexamination, or are at most cumulative to those earlier cited references.  Section 325(d) states

 Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

(Emphasis added).  This guidance in Section 325(d), of course, is not the same as the SNQ threshold requirement for ex parte reexamination.  Still, the APJs might rely upon it to avoid duplication of efforts expended in earlier proceedings.

Finally, BOS presents a sustained explanation of why Macauto USA is unlikely to succeed on the merits of its attack on the ‘291 patent.  As mentioned above, the APJs’ treatment of this aspect of BOS’s Response might indicate how rigorous they intend to be in their substantive consideration of inter partes review Petitions.

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