Don't Forget To Request PTAB Authorization For Motions
(as published in IP Law360
For those new to practice before the Patent Trial and Appeal Board, it’s helpful to look for insight into the board’s thought processes and develop simple strategies for complying with its expectations — particularly in areas where it may diverge from other venues. When filing motions, for example, practitioners are often quite surprised to learn that essentially all motions require authorization from the board before they can be filed, and that unauthorized motions simply will not be entered into the record. Although it appears that the board is employing a more flexible and less formalistic approach to considering motions filed without prior authorization and granting requests for extensions of time (at least those involving settlement of a proceeding that has not yet been instituted), it is still a best practice to follow the board’s rules and request authorization.
As the board repeatedly stated in its rulemaking for inter partes review, post-grant review and covered business method proceedings, it continued its practice of requiring a conference call before the filing of a motion, which could often quickly and inexpensively focus, and perhaps decide, the disputed issue. Still, many not familiar with the board’s long-standing practice have found it so different from what they expected from practice in district court litigation that they have refused to believe this was, in fact, the board’s practice. Thus, the board devotes not one, but two "frequently asked questions" to whether a party can seek relief at any time and how a party can seek relief during an IPR. Similarly, a consistent talking point in presentations given by administrative patent judges at conferences has been the need to seek prior authorization for motions.
Indeed, the board has not hesitated to refuse entry of a motion to amend, relying upon the more specific 37 C.F.R. § 42.121(a), where the movant failed to confer with the board about specific contemplated amendments. In Idle Free Systems Inc. v. Bergstrom Inc., an expanded panel of the board dismissed Bergstrom’s motion to amend because Bergstrom filed the motion “without having conferred with the Board ..., in violation of [the rule].” The board had initially included this opinion as one of its representative orders, decisions and notices, but designated it as an Informative opinion this past fall. Reasons for the board to designate an opinion as Informative include “[p]roviding Board norms on recurring issues” and “[p]roviding guidance on Board rules and practices.”
Faced with an increasing post-America Invents Act caseload, the board seems to have adopted a more flexible approach to the requirement of obtaining authorization via a conference call before filing a motion, at least when it comes to settlement of IPRs. The board has granted several such motions filed jointly by the parties even though the parties did not obtain authorization to file the motion, either waiving the requirement of the rule after the fact, or considering the motion to itself include a request for authorization to file the motion, discerning no prejudice in either case.
Nonetheless, practitioners are well advised to follow the rules and request authorization, even in the case of settlement. The board is treating each of these cases on their own particular facts, and there is no guarantee a particular panel of the board will always be so flexible. Indeed, in each case, the board expressly noted either that the “parties failed to follow [the] correct procedure,” or “did not receive authorization ... as required by [the rule].”
Even in the context of filing a settlement agreement to terminate an IPR, the board has gone even further in its language of reprimand. In Chrysler Group LLC v. Norman IP Holdings LLC, the board stated, “We remind the parties that a ‘motion will not be entered without Board authorization,’ but because these papers were filed jointly, we exercise our discretion to enter and consider the motion and request.” And in Axis Communications Inc. v. Canatelo LLC, the board went still further: “We admonish the parties that the Board requires prior approval to file a motion to terminate and a motion to maintain the settlement agreement confidential.” In addition to avoiding the risk of the motion being dismissed, or perhaps even denied, practitioners will want to avoid the risk of such a public reprimand.
The board’s willingness to be flexible regarding the need to obtain authorization before filing a motion to terminate an IPR in light of a settlement agreement also extends to motions for extensions of time to facilitate settlement. As with any relief in an AIA trial, extensions of time must be requested by a motion. Again, the board’s increasing post-AIA caseload has seemed to prompt some flexibility in this area as well, with the board granting an extension to facilitate settlement without the parties having to file a motion of any kind.
In Aisin Seiki Co. Ltd. v. American Vehicular Sciences LLC, the board granted an extension of time to file the patent owner’s preliminary response after receiving an email request from the parties. The board granted this extension even though this request for relief was not “in the form of a motion,” and did not have “Board authorization.”
A recent case we handled shows how the board’s flexibility on both authorization to file a motion for extension of time and motions to terminate an IPR and file a settlement agreement can come into play in a single case. In IPR2014-01269, the petitioner brought a request to institute an IPR proceeding during a parallel litigation in the U.S. International Trade Commission relating to the alleged unlawful importation of a biologic into the United States in violation of the Tariff Act of 1930. The ITC proceeding was suspended on Aug. 22, 2014, pending finalization of a settlement agreement reached between the parties in that investigation.
The patent owner’s preliminary response to the IPR petition was otherwise due on Nov. 28. On Nov. 12, the patent owner contacted the board and sought an unopposed extension of time until Dec. 19 to file its response. As good cause, the patent owner explained that the parties were awaiting approval from the ITC administrative law judge and, in turn, the ITC, to terminate the ITC proceeding in light of settlement. Per the parties’ settlement agreement, termination of the ITC proceeding in turn would trigger the parties taking the necessary steps to seek termination of the IPR proceeding.
The patent owner pointed out that a similar extension had been granted in IPR2013-00383 in response to an email requesting an unopposed extension of time to facilitate settlement. Finally, the patent owner noted that authorization from the board would be required to file a motion for an extension of time and requested a conference call with the board to seek that authorization. Less than 24 hours after the request was made, the board authorized the extension of time by email “without motion or conference call.”
Once the settlement agreement was finalized, the parties contacted the board to request a conference call to seek authorization to file a joint motion to terminate the IPR. The board replied by email with authorization to file the joint motion to terminate “without the need for a conference call.”
In continuing its practice of requiring conference calls to authorize motions, the board stated that it was doing so to simplify issues, increase speed and reduce costs. Where settlement appears to be imminent, the board has seemed to recognize that those concerns are better served by foregoing the conference call. Importantly, all the opinions cited above where the board exhibited flexibility involved IPRs that had not yet been instituted. It will be interesting to see whether the board continues to extend this flexibility to instituted AIA trials, as well as whether the board extends this flexibility to other areas as it grapples with its increasing post-AIA caseload and gains experience with the first revision of the post-AIA trial rules.
 37 C.F.R. § 42.20(b).
 E.g., Rules of Practice for Trial Before the Patent Trial and Appeal Board and Judicial Review Of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48612, 48619, col. 3 (Aug. 14, 2012); see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48762-63 (August 14, 2012) (“ Generally, a motion will not be entered without prior Board authorization. § 42.20(b). ... The Board has found that this practice simplifies a proceeding by focusing the issues early, reducing costs and efforts associated with motions that are beyond the scope of the proceeding.”).
 E.g., AIA Roundtable slides 35 (motion to amend), 43 (settlement agreement), 75 (additional discovery) (available at http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/ptab-aia-trial-roundtables).
 IPR2012-00027 (PTAB June 11, 2013) (Informative).
 Standard Operating Procedure 2 (rev. 9) at p. 3.
 Netgear Inc. v. Charles C. Freeny III, et al., IPR2014-00704 (PTAB Aug. 25, 2014).
 Sumitomo Chemical Company v. Celgard, IPR2013-00637 (PTAB Jan. 3, 2014).
 See also, Atom Medical Int’l Inc. v. Draeger Medical Sys. Inc., IPR2014-00095, 00194, 232 (PTAB Feb. 19, 2014).
 E.g., Sumitomo (“based on the particular facts of this case, we discern no prejudice to either party or the public”) (emphasis added); Atom Medical (“based on the particular facts of the cases, we discern no prejudice to either party, or the public”); Netgear (“because there is no apparent prejudice”).
 Sumitomo; Atom Medical.
 IPR2014-00560 (PTAB June 26, 2014).
 IPR2014-00394, -00396 (PTAB July 15, 2014).
 Rules of Practice, 77 Fed. Reg. at 48627, col. 3 (“The Office envisions that requests for extensions of time will be made during a conference call with the Board and the opposing party (i.e., an oral motion would be made).”).
 IPR2013-00383, Paper 7 at 2 (PTAB Sept. 12, 2013).
 See 37 C.F.R. § 42.20(a).
 See § 42.20(b).
 Rules of Practice, 77 Fed. Reg. at 48619, col. 3; see also Trial Practice Guide, 77 Fed. Reg. at 48762-63.