APJs Deny Request to Add New Grounds to Inter Partes Review

Scott Daniels | April 15, 2013

The APJs have shown a determination to enforce the inter partes review rules strictly, in order to prevent their dockets from becoming unmanageable.

Their recent decision in Research In Motion v. MobileMedia Ideas, IPR2013-00016, is a good example.  In March the APJs instituted the review, finding that RIM had demonstrated a likelihood that it would prevail against the identified claims, based on two distinct combinations of prior art references.  In the meantime, in a parallel infringement action in Delaware, the trial judge issued summary judgment that two of the identified claims were anticipated by a third prior art reference, one that had not been mentioned in RIM’s petition for review.  RIM therefore asked the APJs to add to the review proceeding a new ground for rejection, specifically a ground based on the third reference.

During a conference call earlier this month, the APJs rejected RIM’s proposed addition to the proceeding.  The APJs stated in a subsequent written order that “the original petition should have included all of the asserted grounds of unpatentability. See 37 C.F.R. § 42.104(b).”  Further, “the additional grounds [proposed by RIM] would place an unnecessary burden on the patent owner and Board, and would impact the ability of the Board to timely complete the review.”  The APJs added that “the new grounds proposed by RIM seem to be redundant in light of the instituted grounds of unpatentability.”

The message to practitioners is to put all your cards on table from the very beginning.  Of course, RIM could still pursue the third prior art reference through a new petition, but a new filing fee would be required.

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