Welcome to Winston & Strawn’s Patent Trial and Appeal Board Practice Update. This publication is a digest of decisions and orders from the weeks of July 22nd, July 29th, and August 5th. To read the update, please click here.

Oral arguments to be held this week. The PTAB will hear oral argument in two post-issuance trials this week. On August 13, 2013, at 10 AM, the Board will hear argument in CRS Advanced Techs., Inc. v. Frontline Techs., Inc., CBM2012-00005. At this time, the Board has not indicated that this hearing will be available telephonically. On August 16, 2013 at 1 PM eastern, the Board will hear Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001. This argument is also being made available by phone.

Board announces additional requirements for depositions conducted in a language other than English. In Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (Aug. 7, 2013), the Board announced additional requirements for a foreign language deposition. Specifically, “[r]ule 42.53 governs the taking of testimony, including cross-examination testimony. In addition to adhering to the requirements of that rule, the following guidelines are to be used when conducting a deposition in a foreign language. In the guidelines below, “party” refers to the party proffering the witness, and “opponent” refers to the party cross-examining the witness.

1. The party proffering the witness is responsible for providing a “first interpreter” who can interpret using a consecutive mode of interpretation.
   
2. At least five (5) business days before the cross-examination deposition, the party shall provide to the opponent the name, business address, business telephone number, e-mail address, and resume of the first interpreter.
   
3. The opponent may engage the services at the counsel table of a “second interpreter.”
   
4. At least five (5) business days before the cross-examination deposition, the opponent shall provide to the party the name, business address, business telephone number, e-mail address, and resume of the second interpreter.
   
5. The consecutive mode of interpretation shall be used.
   
6. If the second interpreter has a disagreement with the first interpreter regarding the interpretation of the question and/or the answer, the second interpreter should inform counsel by note. If counsel desires to raise the disagreement on the record, the second interpreter, using the consecutive mode, will be allowed to interpret the question for the witness, as well as the witness’ answer to the second interpreter’s interpretation of the question.
   
7. If there is a disagreement as to interpretation, and the first and second interpreter cannot work out a mutually agreeable interpretation, an objection should be made on the record, and the first and second interpreter should specify on the record what they believe to be the correct interpretation.
   
8. In such an event, the Board will determine which interpretation, if any, is to be accorded more weight.
   
9. Collateral attacks with respect to the qualifications of any interpreter, or the manner in which any question or answer was interpreted, shall not be allowed after the conclusion of the deposition.
   
10. Copies of any documents which an interpreter will be required to “sight translate” at the deposition shall be provided to the interpreter no later than three days before the deposition is to take place. Failure to timely provide the documents may result in their exclusion from evidence. Unless agreed to by both parties, the interpreter shall not reveal to opposing counsel the nature of any document so provided.
    
11. If, at any time during the deposition, the interpreter is unable to interpret or translate a word, expression, or special term, the interpreter shall, on the record, advise the parties of the issue.
    
12. An individual may not serve simultaneously as both an attorney for a party and as an interpreter.”

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Board addresses concerns over serial motions for joinder: The Patent Act, as amended by the AIA, includes a one-year window for filing a petition for inter partes review after service of a complaint on the real party in interest or a privy. See 35 U.S.C. 315(b). The one-year bar has an exception: If a trial is instituted on the same patent, a petitioner that would otherwise be barred from filing a petition can, within one month of institution of a trial on that patent, file a petition accompanied by a motion for joinder, seeking to participate in the trial proceedings. The Board has granted several of these motions to date. In a recent proceeding, both the patent owner and the petitioner opposed a motion for joinder filed by a third party. They raised concerns about serial motions for joinder. Specifically, they argued that under the Board’s interpretation of the statute and the rules, once a first motion for joinder is granted and trial is instituted, yet another would-be petitioner could file a motion for joinder based on the institution of trial in the joined proceeding, essentially allowing the one-year bar to be extended indefinitely. The Board addressed this concern noting that joinder is always discretionary: “the Board has the discretion to join a party,” and that “does not mean that joinder is automatic, particularly given the need to complete the proceedings in a just, speedy, and inexpensive manner.” Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 (Jul. 29, 2013). It appears that shortly after this decision, another party raised the prospect of joining the existing proceedings. The patent owner, original petitioner, and the petitioner in the joined proceedings have until August 13, 2013 to file oppositions to the motion for joinder. Avaya Inc. v. Network-1 Security Solutions, Inc., IPR2013-00071, Paper 41 (Aug. 7, 2013); see also Sony Corp. of Am. v. Network-1 Security Solutions, Inc., IPR2013-00386, Paper 16 (Jul. 29, 2013).

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Joinder Strategies For Petitioners Becoming More Clear. For petitioners that have allowed the one-year statutory period to lapse for the filing of an IPR, if another petitioner is successful in having trial instituted in another proceeding, the petitioner that was served with a complaint more than one year earlier can file a petition with a motion for joinder. The Board has discretion to deny the motion. So, what improves a petitioner’s odds for having the motion granted? It appears that attacking the claims on the same grounds on which trial was instituted, using the same evidence, and attacking only the same claims as those at issue in the earlier proceeding may be the best approach. This may be best shown by the Dell Inc. v. Network-1 Security Solutions, Inc. IPR and the Sony Corp. of America v. Network-1 Security Solutions, Inc. IPRs. In one case (Dell) joinder was permitted, in the other (Sony Corp.) joinder was denied. In the Dell case, Dell attempted to minimize the differences between the scope of trial in the earlier IPR and the IPR sought by Dell, whereas in the Sony case, Sony sought to attack a new claim, include new grounds for trial, and put forward new evidence in support of its petition. Therefore, those seeking joinder will likely want to keep the issues as narrow as possible when filing their petitions for inter partes review.

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New Tactic to Avoid Joinder In Some Cases? As noted above, petitions filed more than one year of service of a complaint are barred under section 315(b), with the limited exception of petitions filed with a motion for joinder within one-month of institution of trial. At least one petitioner has attempted to use the joinder provision to seek institution of trial on claims that the Board declined to institute trial on in connection with a first petition. See ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00454. The patent owner may have discovered a way to work around this and preclude institution of an IPR on those claims that the Board declined to institute trial on the first time around. Specifically, the patent owner cancelled all of the claims on which trial was instituted, and adverse judgment was entered in its favor even over the objections of the petitioner who asked for the request for cancellation to be evaluated after its joinder petition was ruled on. See ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00134, Paper 34 (Aug. 6, 2013). Now, it would appear that there is no pending proceeding to join. That the joinder will be denied on this grounds is not clear. In an earlier conference call between the parties, the Board explained that it should not “assume that if this inter partes review is terminated, it will be successful in the new inter partes review requested by [petitioner] in arguing that the new review is time-barred because this review is no longer pending and available to be joined.” See ZTE Corp. v. Contentguard Holdings Inc., IPR2013-00134, Paper 25 (Aug. 6, 2013). This issue is currently being briefed by the parties in connection with IPR2013-00454.

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Can IPR Be Used to Set Up Section 112 Indefiniteness Arguments? Inter partes review cannot be used to challenge a patent claim on the basis that it is indefinite, lacks written description, or is not enabled. See 35 U.S.C. 311(b) (allowing a request for IPR based on “patents or printed publications”). But, does that mean that the Board might not give an accused infringer ammunition usable in a court or other tribunal. For example, in Sony Computer Entertainment of America v. Grobler, IPR2013-00076, Paper 12 (Jul. 22, 2013), the Board construed the term “verification mechanism for verifying the authenticity of the key means.” When construing this term, the Board noted that “[t]he specification provides no description of the structure of the” claimed verification mechanism. The Board noted that it could not consider issues of definiteness, so it based its construction of this term on its construction of the term “key means.” It will be interesting to see how much (if any) deference this comment regarding claim construction may have in the courts.

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How Should Improper Arguments and Evidence Submitted in a Petitioner’s Reply to the Patent Owner’s Response Be Addressed? The answer to this question may be a bit of a work in progress at the PTAB. For example, in Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 33 (Jul. 18, 2013) and Liberty Mutual Ins. Co. v. Progressive Cas. Ins. Co., CBM2013-00002, Paper 35 (Jul. 18, 2013), the Board indicated that an objection to the scope of the reply and evidence submitted can be raised as part of a motion to exclude under 37 C.F.R. 42.64. In a series of cases decided after the Liberty Mutual decision, the Board seems to have changed direction. For example, in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 79 (Aug. 9, 2013), the Board explained that the Board will determine whether information outside the scope of a proper reply will be made when the Board issues its final written decision. Instead of suggesting this issue can be raised in a motion to exclude, the Board indicated that “[b]riefing from the parties as to whether an argument or evidence is submitted outside the scope of a proper reply is rarely authorized.” See also Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 43 (Aug. 6, 2013) (stating briefing on the issue of whether reply is proper under Rule 42.23 is “not necessary” and noting that patent owner can raise the issue “at the oral hearing”).

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