Lawyers Need to be Very, Very Careful in IPR & Post-Grant Cases

Scott Daniels and Cindy Chen | February 19, 2013

We have previously reported that the APJs are strictly applying the rules in inter partes review and covered business method post-grant review proceedings.  Those rules require adherence by the parties to a very precise sequence of procedural steps.  A number of lawyers, accustomed to the freer rein they enjoy in District Court cases, have already run afoul of those rules.

In Wowza Media v. Adobe Systems, IPR2013-00054, the Patent Owner filed a letter stating that it intended to file “a preliminary response in the inter partes reexamination.”  The APJs pointed out that the “communication … does not comply with the rules” and expunged it from the record.  The Patent Owner also appears to have failed to timely file its Mandatory Notice identifying the real party in interest, related matters, lead and back-up counsel, and service information, as required by § 42.14(a)(1).  The APJs sua sponte granted an extension of time, and the required Notice has now been filed.

In Liberty Mutual Ins. v. Progressive Casualty Ins., CBM2012-00010, CBM2012-00011, CBM2013-00001 & CBM2013-00002, the Patent Owner sent an email to the Board asking for procedural assistance on an evidentiary matter, without copying opposing counsel.  The Trial Paralegal struck the email from the record, characterizing it as an “improper communication.”  She explained that the email constitutes “a substantive communication” since it “identifies the evidence and explains its relevance.”  She added that a party seeking relief must file a motion and that such motions require authorization from the Board.  Further, “a party seeking authorization to file a motion should contact the Board support staff to request a conference call with the other party and [the] Administrative Patent Judge.”

Neither of these missteps appears to have created a specific substantive problem, yet no party wants to start a proceeding on the wrong foot with the ultimate decision-makers.

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