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What Does Default Look Like in IPR Cases?
| July 18, 2013
As expected, the APJs have applied their rules very strictly to ensure compliance with the statutorily imposed deadlines for inter partes review and post-grant review proceedings. How will the APJs handle cases involving parties who are unfamiliar with those rules, particularly foreign companies?
So far, the answer has been that the APJs will treat such parties carefully, giving them a fair opportunity to participate to the proceeding. For instance, in UKing Universe, Inc. v. Chang-Kang Chu, IPR2013-00212, the challenger filed its petition at the end of March, asserting that each of the claims of the patent are unpatentable over the prior art. The APJs sent a notice to the patent owner, requiring it to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the Petition. The patent owner did not reply.
Three times – on April 19, 2013, April 29, 2013, and May 9, 2013 – the APJs contacted the patent owner, reminding it that its filing was overdue and notifying it that a mandatory telephone conference would occur on May 14, 2013. Soon thereafter, a representative of the patent owner sent the APJs an email which read: “Thank you for this notice [concerning the May 14, 2013 telephone conference]. The Patent Owner would like to abandon the patent. Thus, he will not give any response to the petition.”
The conference call occurred without the patent owner, and on June 11, 2013, the Board issued an Order To Show Cause within one month why adverse judgment under 37 C.F.R. § 42.73(b) cancelling the challenged claims should not be entered. A week later, the APJs received e-mail from the patent owner stating that it might file a response and asking how to participate in the procedure.
The APJs emailed the Patent Owner that “any action on behalf of the Patent Owner must be taken by a registered patent practitioner and reminding the Patent Owner of the due dates for filing a Patent Owner’s Preliminary Response and response the Order To Show Cause.” The APJs confirmed that the patent owner had received the email. Finally, on July 12, noting that the patent owner had not responded to their Order to Show Cause and had filed no papers, the APJs, out of patience, cancelled the challenged patent claims.
It appears that the APJs intend to follow a path similar to the default procedures applied to missing respondents in § 337 investigations: to be certain that the patent owners are aware of the proceedings and have a chance to participate, but not to allow them to derail those proceedings.
