APJ’s Enforce Ex Parte Communications Prohibition

Scott Daniels | February 1, 2013

Once again the APJs have made clear that the new AIA post-issuance matters are not informal proceedings, this time chastising counsel for breaching the Patent Office’s prohibition against ex parte contacts in inter partes-type matters.

In IPR2012-00035 & 00037, both entitled Nissan North America v. Patent of Collins and Davanloo, Petitioner Nissan sent identical emails directly to APJ Sally Gardner Lane, advising her that the Preliminary Responses filed by Patent Owners Collins and Davanloo contained mathematical errors.  These errors, Nissan said, could “materially impact” the proceeding.  Specifically, in three instances, the Patent Owners had inaccurately calculated the diameter of modules disclosed in prior applications.  According to Nissan’s email, which was not copied to the Patent Owners, this “basic and indisputable mathematical error” was “especially significant because the Patent Owner makes no arguments whatsoever other than those relating to [the] priority date of at least three of the prior art references.”  Nissan’s email concluded with the request: “[w]e would like to know the proper procedure for requesting judicial notice of this false statement.”

In an Order seven days later, the APJs did in fact take notice, expressing concern about “the manner and content of the Nissan email.”  “It is troubling that Nissan contacted the Board and included information to rebut the Collins Preliminary Response without authorization to do so.”  The APJs continued that “[i]t is even more troubling that Nissan did so without providing Collins with a copy of the email.”

The APJs explained that “[c]ommunications with a Judge or other Board member regarding a specific proceeding is not permitted unless both parties have an opportunity to be involved in the communication,” citing Patent Office Rule 42.5(d) that prohibits ex parte communications (“Communication regarding a specific proceeding with a Board member defined in 35 U.S.C. 6(a) is not permitted unless both parties have an opportunity to be involved in the communication”).  The APJs acknowledged that the PTO’s Practical Guide allows for certain exceptions to this prohibition (such as to arrange a conference call), but they found that none of these exceptions applies to Nissan’s email.

For good measure, the APJs added that Nissan’s email was an improper attempt to reply to the Patent Owners’ Preliminary Responses.  Nissan’s path for correcting any errors in those Responses was to seek reconsideration in the event that the APJs institute IPR, the APJs advised in a footnote.

Citing possible prejudice to the Patent Owners, the APJs authorized them to file a response to Nissan’s assertion of mathematical errors.  (The Patent Owners have now done so, admitting error, but contending that the error does not affect their basic argument).  The APJs concluded with a caution to Nissan “against any further improper ex parte communication.”

*

In more positive news from the APJs, review was granted yesterday against U.S. Patent No. 7,591,303 in Idle Free Systems v. Bergstrom, IPR2012-00027, filed by our friend Matt Smith at Foley Lardner.  This is the first case, to the best of our knowledge, where IPR has been granted for all claims petitioned.

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