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Copy of oral arguments from Oil states on VPLM facebook
https://m.facebook.com/story.php?story_fbid=298557573884355&id=148935955513185
In 2018!
U.S. Supreme Court divided over legality of patent reviews
Reuters ReutersNovember 27, 2017
(Adds background to case, details from arguments, paragraphs 5-18)
By Andrew Chung
WASHINGTON, Nov 27 (Reuters) - U.S. Supreme Court justices on Monday appeared divided over whether a federal agency's in-house process for challenging patents violates the constitutional rights of patent owners, leaving the fate of a system that has led to a high rate of patent cancellations uncertain.
In one of the most important patent cases to come before the Supreme Court in years, the nine justices heard an hour of arguments in a dispute over the U.S. Patent and Trademark Office's patent review proceeding known as inter partes review (IPR). A decision to strike down the reviews could fundamentally change the way patents disputes are litigated in the United States.
While some of the court's liberal justices voiced support for the process, conservative justices raised concerns that the government might be able to revoke patents too easily.
The reviews have become a quick and cheap way for companies to try to invalidate patents owned by competitors and others, and have been especially popular with high technology companies such as such as Apple Inc and Samsung Electronics Co Ltd that are common targets of patent infringement suits.
The case arose from a dispute between two rival Houston-based oilfield services companies, Oil States International Inc and Greene's Energy Group over a patent on protecting wellhead equipment used in the hydraulic fracturing, or fracking, of oil wells.
In challenging the review process, Oil States argued that patents are private property that may be the revoked only by a federal court, and that the administrative procedures violate the U.S. Constitution's right to be heard by a federal court and jury. The standard for canceling a patent is higher in federal courts than in the review process.
Liberal Justices Ruth Bader Ginsburg, Elena Kagan and Sonia Sotomayor noted that the patent office has long had the power to grant patents and invalidate wrongly issued ones after the fact.
"There must be some means by which the patent office can correct the errors it's made," Ginsburg said.
Sotomayor added that what "saves" the system is the fact that any invalidation can be appealed to the Washington-based U.S. Court of Appeals for the Federal Circuit for full judicial review, as happened in this case.
CONSERVATIVES RAISE DOUBTS
Conservative Justice Neil Gorsuch raised doubts, countering that judicial review is available only if someone appeals a patent review proceeding's decision, which does not always happen.
Conservative Chief Justice John Roberts said Supreme Court precedents have frowned upon the government offering benefits on a conditional basis in which "you have to take the bitter with the sweet."
The court is due to rule on the case by the end of June.
An Oil States subsidiary sued in 2012 claiming Greene's infringed its patent. Greene's responded by filing an inter partes review at the patent office's Patent Trial and Appeal Board, which later canceled key parts of the patent. The Federal Circuit upheld that ruling last year.
The U.S. Congress created the reviews as part of a 2011 law called the America Invents Act to deal with the perceived high number of poor-quality patents that had been issued by the patent office in prior years, which helped fuel the business model of so-called patent trolls that make money off patents rather than products.
In about 1,800 final decisions up to October, the agency's patent board canceled all or part of a patent around 80 percent of the time.
The case attracted attention from industry heavyweights.
Backed by the President Donald Trump's administration, Greene's has the support of some large technology firms like Alphabet's Google and Intel Corp hoping to curb abusive litigation. Small business and inventors' groups supported Oil States, as did name-brand pharmaceutical companies such as AbbVie Inc, Allergan plc and Celgene Corp.
(Reporting by Andrew Chung; Editing by Will Dunham
An informative article to your statement
http://www.32trades.com/market-makers-knowing-what-youre-up-against/
Market Makers: Knowing What You’re Up Against
Traders often catch a story, rumor, news or filings about a company and will rush over to their trading screens to place an order. Level 2 can be one of the most valuable tools a trader can have, but like any tool in a tool chest, not understanding how it works, can sometimes turn what was thought to be a good idea into a quick buck for someone using dirty market makers. While the role these guys play on OTCBB and Pinksheets listed stocks is huge, who they are and how they work is critical knowledge in the quest to know what you’re up against when trying to make a couple of bucks.
What are Market Makers?
A market marker is a firm whose sole function is to help make a market for a stock, by making bids and offers from their account in the absence of public buy or sell orders. Often times, there is not a lot of liquidity or trading volume in some of these stocks which creates a need for market makers to step in and create an environment in order to draw in a crowd and make something happen. Just like a Vegas bookie, these market makers compete with one another to buy or sell stocks to investors with their displayed bids and offers, profiting by taking the order and by taking advantage of the bid and ask spreads.
Just like bookies, some are slightly more legit than many others are that you will see regularly when playing hot stocks.
Why Are Market Makers Important?
Like it or not, your fate is in the hands of market makers since they essentially control the stock market. Your order placed to buy or sell a stock on the OTC Markets will usually pass through one of the more trusted sources like NITE, ATDF, ETRF, and ARCA. Seeing a level 2 screen which only has these on it is what’s referred to as a “Clean Level 2” – one with no dirty hands on it. Typically, these four are there to do what markets makers are supposed to do which is simply fill buy & sell orders without attempting to manipulate the behaviour pattern of a particular stock.
When I see these four market makers on a level 2 screen, usually I will investigate the orders that have recently gone through to see if they were sells or buys in an effort to gauge the psychology of those involved already with the stock. Since there is a high probability these trades are being done by traders and not the market makers until given some reason to see otherwise, it gives some clearer insight as to an expected direction/momentum for stock on a given day.
Pump It
Given what’s been said so far, don’t put it past these four to play games and try to manipulate a stock. One of the signs is when you see a particular one on the top of the bid and ask with a spread wide enough to provide for them to scalp some profits in between. Regardless, these four are much less harmless than when you start getting into the “B” and “V” groups that can take something like that sounds all good and yet every bid posted gets whacked as fast as every ask order gets hit.
Market Makers To Watch Out For:
Alternative Execution Group AEXG
Maxim Group LLC MAXM
Puma Capital, LLC PUMA ?
Vandham Securities Corp. VNDM ?
BTIG, LLC BTIG
Vfinance Investments, Inc VFIN ?
The Vertical Trading Group, LLC VERT ?
Buckman, Buckman & Reid, Inc. BKRT ?
BMA Securities BMAK ?
GMP Securities, LLC MITR
INTL FCSTONE FINANCIAL INC INTL
R. F. Lafferty & Co., Inc. LAFC
Ascendiant Capital Markets, LLC ASCM
Delaney Equity Group LLC DLNY
Wall Street Access WABR
Spartan Securities Group, Ltd. MICA
Biltmore International Corporation BMIC
Wilson-Davis & Co., Inc. WDCO
DINOSAUR FINANCIAL GROUP, L.L.C DINO
D.A. Davidson & Co. DADA
Keefe, Bruyette & Woods, Inc. KBWI
Tradition Asiel Securities Inc. TRAS
Raymond James & Associates, Inc. RAJA
MONROE FINANCIAL PARTNERS, INC. MONR
Fig Partners, LLC BNKS
T.R. Winston & Company, LLC TRWN
Stockcross Financial Services, Inc. STXG
Rafferty Capital Markets, LLC RAFF
Stifel, Nicolaus & Company, Incorporated STFL
Wedbush Securities Inc. WEDB
Glendale Securities, Inc. GLED
Alpine Securities Corporation ALPS
CRT Capital Group LLC CRTC
The list above is based on order of recent activity with AEXG being the most active in transactions and CRTC the least active. The “Three C’s”: Citadel Securities (CDEL), Canaccord Genuity (CSTI) and Cantor Fitzgerald (CANT) are almost always on a ticker together with the four more trusted sources mentioned above. While these “Three C’s” are rarely toxic diluters, they can be heavy short sellers at times, taking advantage of a good thing which is part of the game.
Of the highlighted ones listed towards the top of the table, what you will experience most always when trying to battle with them is that when these diluting market makers appear, they will usually show 10,000 shares for trade. Countless “Ask Slaps” at that 10,000 do nothing as the count remains 10,000 due to a very deep well of securities to sell. Others listed lower like WDCO, STXG and GLED are brokerage houses which will take share certificates and clear them for low level toxic diluters (those who cut a deal with a company to buy some shares on the cheap).
pumaOf all those listed, PUMA is one which can make you pull your hair out more often than not. A lot of times you will see PUMA on the high bid and rarely, if ever, on the ask. Then, there are times where you will see PUMA boxed in (on the high bid and the high ask) with a wide enough spread to “scalp” the in between as well as scare investors into selling to them on the bid.
What PUMA will be looking to accomplish is one of two things: either accumulating ahead of an anticipated public event, or a short covering before a possible move to the upside. Either way, this battle can last weeks and makes seeing them atop the bid/ask of a ticker one you will only want to enter into if it’s understood you could be there for awhile.
Contrary to popular opinion, market makers don’t really have a license to print money like many try to insinuate. They get their $1,000,000 fines every other year from the SEC for jumping bids although they are required to buy and sell at bid and ask prices. Despite having the ability to hedge by short selling and swap agreements (which come across the screen as T-Trades or show “avg.” after it), both of which many individual investors see as “market manipulation,” they create the market for the little or no trading volume stocks.
Cheers to the longs in finding that one special diamond in the rough so many years ago!
Yup $$$$$$$$$$$
I'm same. Bought sub penny and have been sitting on this for years like you and many others. New they had something good so it's been worth the wait!
Woohoo Voip-pal.com!
Why SAS Institute Matters More Than Oil States
http://www.ipwatchdog.com/2017/11/08/why-sas-institute-matters-more-than-oil-states/id=90049/
Oil States Energy Services LLC v. Greene’s Energy Group, LLC, now scheduled for oral argument before the Supreme Court on November 27, is clearly receiving all the attention this fall. The possibility of finding Patent Trial and Appeal Board (PTAB) post grant proceedings unconstitutional cannot be understated. But oral arguments will also be heard on that same day in the less-noticed SAS Institute v. Matal. That case involves 35 U.S.C. § 318(a), which requires PTAB to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.” Despite the plain meaning of the statute, current PTAB practice is to only issue a final decision on some of the claims.
For example, if a post-grant petition only meets the “reasonably likely to succeed” standard on some claims, the PTAB trial only goes forward on those claims and the PTAB does not make any formal rulings on the patentability of the other claims. This practice was seen as proper by the Court of Appeals for the Federal Circuit (CAFC) in SAS Institute and in their prior decision in Synopsis v. Mentor Graphics , to enable the Patent Office to “secure the just, speedy, and inexpensive resolution” of post-grant proceedings. If the Supreme Court reverses the CAFC, the PTAB will be forced to address both the reasonable and unreasonable grounds in writing in every case.
Curiously, the patent bar seems conflicted as to whether a reversal would be good or bad for patentees. As to the potential downside for patent owners, a reversal by the Supreme Court may encourage petitioners to make as many arguments as possible. The patent owner then must respond to even the weak arguments, with the resulting waste of the parties’ resources on possibly irrelevant issues. Some patent owners also believe the current practice of partial institution is of significant value for other reasons. Patent owners are often anxious to get to trial in the parallel civil lawsuit. They can avoid a stay of such concurrent litigation, since at least some other claims will remain on the table even after the PTAB’s decision. Furthermore, some believe the need to address all claims in a PTAB trial will undermine early settlement opportunities.
Others see an upside for patent owners if the Supreme Court reverses. They see the PTAB’s current practice as eliminating one of the originally envisioned benefits of the AIA. At the present time, the parties are left with unaddressed claims that must still be litigated as if no post-grant proceeding had ever occurred. More importantly perhaps, the PTAB does not authorize an IPR to move forward unless there is a reasonable likelihood that the petitioner will prevail. When there is a decision to move forward on only some of the claims, that MUST mean that the PTAB would have decided against the petitioner on the other claims. Coupled with the presumption of validity that attaches to issued patent claims, such a decision could only mean the petitioner will be estopped from ever challenging those patent claims again.
Regardless of you or your patent counsel’s opinion on this, should any form of IPRs survive Oil States, the following SAS Institute decision should be watched with equal anticipation. A reversal in SAS Institute will no doubt have you rethinking your PTAB strategy.
Bullish or Bearish on the 2018 Patent Market?
By Gene Quinn
November 5, 2017
http://www.ipwatchdog.com/2017/11/05/bullish-bearish-2018-patent-market/id=89498/
There is a Brief amicus curiae posted on Oct 30th in the Oil States case from both Unfied & Apple.
Brief amicus curiae of Apple Inc. filed. (Distributed)
Brief amicus curiae of Unified Patents Inc. filed. (Distributed)
http://www.scotusblog.com/case-files/cases/oil-states-energy-services-llc-v-greenes-energy-group-llc/
Update on Locksmith Financial Corporation, Plaintiff(s) vs. VOIP-Pal.Com Inc, Defendant(s)
Case No. A-15-717491-C
10/26/2017 Minute Order (7:45 AM) (Judicial Officer Cory, Kenneth)
Minutes
Result: Minute Order - No Hearing Held
01/18/2018 CANCELED Pretrial/Calendar Call (9:00 AM) (Judicial Officer Cory, Kenneth)
Vacated
02/05/2018 CANCELED Jury Trial (1:30 PM) (Judicial Officer Cory, Kenneth)
Vacated
08/16/2018 Pre Trial Conference (9:00 AM) (Judicial Officer Cory, Kenneth)09/04/2018 Jury Trial (1:30 PM) (Judicial Officer Cory, Kenneth)
Minutes
10/26/2017 7:45 AM
-NOTICE AND ORDER: Supplemental Trial Order MINUTE ORDER Case No. A717491 The Jury Trial for this case has been continued to a Stack date of 09/04/18 at 1:30 p.m. The continuance was by stipulation between counsel pursuant to Rule 2.35 EJDCR. The stipulation should contain the dates for the close of discovery pursuant to Rule 2.35. The date for the deadline for filing dispositive motions shall remain no more than 30 days following the discovery cutoff, pursuant to NRCP 16.1 (c) (8). Counsel should not presume that by informally stipulating to continue some discovery past the discovery cutoff date that the above deadline for dispositive motions is somehow affected. The deadline to file motions in limine, in accordance with Rule 2.47 EJDCR remains no less than 45 days prior to the stacked trial date, and heard not less than 14 days prior to the same stacked trial date. The Pretrial Conference/Calendar Call will be held on 08/16/18 at 9:00 a.m., District Court Dept. 1. The lead trial attorney trying the case shall attend and should come prepared with his/her calendar for the entire 5-week stack, as well as the 5-week calendar for all witnesses to be called in the trial. Your case may be tried anywhere within the 5-week stack, regardless of age of the case. The Court notes that it becomes increasingly difficult to accommodate the schedules of out-of-state witnesses, particularly expert witnesses. It is up to counsel to anticipate scheduling difficulties with witnesses and to notify the Court and opposing counsel well in advance of the Pretrial Conference/Calendar Call date. It will not do to simply appear at Calendar Call expecting to notify the Court at that late date of the need to reschedule the trial. If you do so, you may expect to be treated with the same consideration which you have shown for both the Court and opposing counsel. A ready alternative to live, in-court testimony is available through the use of either deposition testimony or live video testimony, through the use of now-available technology installed by the Eighth Judicial District Court. The Court has presided over a number of trials where expert testimony was admitted utilizing a live video feed technique and has noted little or no diminution in the effectiveness of live video testimony compared to live in-court testimony. Rule 2.47 EJDCR The Court is singularly unimpressed with attorneys who wait too close to motion deadlines to hold meaningful conferences pursuant to EJDCR 2.47(b), prompting the filing of many form motions in limine, or worse yet, a form omnibus motion in limine, with little or no particularized reference to the facts of the present case. Often the motions merely ask that settled law be enforced at trial. A motion in limine is moving counsel s opportunity to raise prior to trial those few evidentiary issues which are novel or as to which the law is thus far silent. Rather than ask that settled law be enforced in a motion in limine, counsel are invited to file a trial brief outlining an issue in which, in counsel s estimation, the Court may not be as well versed as counsel would wish. An omnibus motion in limine is a sure tip-off that the very stock motions which EJDCR 2.47 seeks to avoid are being filed and accordingly should not be filed. The failure to evidence that meaningful Rule 2.47 conferences are being held will likely result in all motions in limine being stricken by the Court sua sponte. The Court will make the determination not only from the certificate evincing compliance with the Rule but also from the substance of the motions themselves. Also, given that the deadline for filing dispositive motions will have already passed, a motion in limine should not be a motion for summary judgment in disguise. This Order shall supplement the original trial order, which counsel are invited to re-read. 8/16/18 9:00 AM PRETRIAL CONFERENCE 9/4/18 1:30 PM JURY TRIAL CLERK'S NOTE: The above minute order has been distributed to: Kurt Bonds, Esq. (kbonds@alverstontaylor.com) and Harold Gewerter, Esq. (harold@gewerterlaw.com). /mlt
All patent infringement is willful patent infringement
By Paul Morinville & Gene Quinn
November 1, 2017
http://www.ipwatchdog.com/2017/11/01/patent-infringement-willful-patent-infringement/id=89787/
The American Inventor’s Protection Act of 1999 (AIPA) requires the USPTO to publish patent applications 18 months after the inventor files the application. An inventor can ask that the patent application not be published if no corresponding foreign applications will be filed. Some do, but the vast majority of patent applications are published by the USPTO on their searchable public website. Anyone with a web browser can search for and find the inventions, with full detail disclosed, regardless of whether a patent ever issues.
The AIPA creates a tough decision for inventors. Publishing how an invention works obviously means that it can never be protected as a trade secret. The loss of trade secret protection should theoretically be overcome when the patent issues because it becomes an “exclusive Right”, a property right, and infringers can be enjoined. Of course that theory only works if the government enables the exclusivity and provides a reasonable and affordable way to enforce it. Based on trust that the government will uphold its end of the bargain (a very poor assumption in 2017) most inventors allow their invention to be published and forego trade secret protections. That is becoming an increasingly bad choice.
The problem is that once published by the USPTO anyone can simply search the USPTO website to find inventions that apply to their business, pick off the good ones, and commercialize them long before the inventor has patent protection. A case called eBay v. MercExchange effectively eliminated injunctive relief by requiring an impossibly difficult public interest test before a court can grant injunctive relief. So if a big corporation steals an invention made by an independent inventor, or even an invention by a small technology company or start-up, odds are they get to keep on trampling the allegedly exclusive rights even if they are found to be infringing after having lost at trial.
When the inventor finally gets the patent granted (normally years after USPTO publication, and sometimes decades after publication), it is practically impossible to attract investment to commercialize an invention if big corporations have saturated the market with infringing products. Investors will uniformly explain to inventors that the odds of competing with these big corporations in a saturated market post-eBay is effectively zero, so they won’t invest. I was told by several venture capitalists that I didn’t need an investor – I needed a lawyer.
It is difficult to argue with the perspective of these investors. How can an individual, start-up or even a small technology company compete when a big corporation has stolen an invention and saturated the marketplace? Once upon a time strong patents equalized the playing field, but those days are long gone, at least in America.
Of course, if an inventor has a couple of million dollars stuffed in the mattress, they can hire a lawyer and sue infringers. But what can realistically be achieved? Because of eBay, it is nearly impossible to satisfy the public interest test without a product on the market and the means to manufacture it at a scale that can replace the large corporate infringer’s products. A tall order indeed. The remaining option is a compulsory license at an arbitrary value decided by a judge and then re-decided by Federal Circuit, which in recent years only ever seems to vacate or reduce damages awarded to innovators regardless of the fact that infringers who are stealing innovations are making many billions of dollars, sometimes many tens of billions of dollars.
The reality created by eBay in light of the AIPA is simple: If you scrape an invention off the USPTO website and massively commercialize it, you get to keep it. Ubiquity has become a defense. How odd that ubiquity caused by your own initial theft becomes an impenetrable shield in patent infringement litigation.
It is humorous when big corporations say they would never scrape the USPTO for inventions to steal. Apparently we are to believe they are just too honorable to stoop to such a low level. We should all just trust them. But the job of a big corporation is to commercialize technology, to maximize profits, and to protect their business and profits. Scraping the USPTO website aids in all of these business goals. If they aren’t doing that given the current climate in the U.S. and one-sided laws in favor of infringers they are not acting in the best interests of the company and shareholders and shareholder lawyers should demand to know why. Scraping grants access to new technologies that they would not otherwise have access to – and at virtually no cost. And since eBay makes it impossible for most inventors to stop the big corporation from infringing, their business and profits are protected. Only Pollyanna would believe that huge corporations do not scrape the USPTO for inventions.
What’s never talked about is that virtually all big corporations claim they are the leading edge of technology – the experts in the market of that particular technology. They want us to believe that they are the ones who invent the next generation of products and that is the reason we should buy their products over a competitor’s products. The claim of being the leading company necessarily means that they know what technology is coming down the pike. But being the expert is more than a marketing slogan and an inducement to buy their products. They have to be the expert. If they fail, they risk their business. Think of buggy whips, cassette tapes, cathode ray tubes, and wired phones, to name but a few.
There are a lot of ways that big corporations learn what technology is coming. They go where the technology is born. They reverse engineer competitor products, attend trade shows, hire employees from competitors, talk to vendors, enter into acquisition discussions, and they review competitor websites, white papers and technical documents. And they search the USPTO website. It is the one place on earth where those technologies are openly published and enabled so that folks skilled in the art can build it, after all that is one of the basic requirements of an adequate disclosure.
It is not believable when a big corporation denies knowledge of a patent they infringe. That knowledge is freely available on the USPTO website and if they do not know the technologies coming, their business could be substantially damaged, and possibly fatally damaged. Finding those inventions means too much to the continued success of their company and it is disingenuous to say that they did not look and do not know. And if that is true, shareholders and their lawyers should once again start to ask some very serious questions about gross incompetence and substantial mismanagement. Either these companies know what they are doing, or they should know what they are doing. That means their actions are either intentional or reckless, and either should qualify as being characterized as willful patent infringement.
Big corporations argue that it is impossible to know all of the inventions published at the USPTO and therefore they never infringe willfully. With thousands of employees and tens of millions of dollars in revenue, these big corporations have plenty of resources to find inventions on the USPTO website. While there are a lot of patents overall, the number that would apply to any given field is a much smaller number. It is unreasonable to argue that there are just too many patents. Furthermore, these same big corporations regularly search trademark databases maintained by the same USPTO to make sure no trademarks are being requested that come to close to any in their trademark portfolio. So why can’t they do the same for patents? The truth is they just don’t want to have that burden because it is easier to fake ignorance and steal technology rather than respect patents in an era where patent rights are historically weak.
But when a big corporation wants to invalidate an inventor’s patent, they expect the inventor to know not only everything on the USPTO website, but even documents written in different languages and stored on paper in places like Belarus or Zimbabwe. With their vast resources, big corporations on one hand argue they cannot possible know what is in the USPTO because they do not have the resources to do it, and then on the other hand demand that inventors with minimal or no resources at all are required know all that and more. How ridiculous! Requiring inventors to have knowledge of everything in every language ever spoken but not to require infringers to have knowledge of what is carefully indexed, in English and published and searchable for free? Talk about a double standard.
Of course, not all infringers should be liable for willful patent infringement. Some infringers are not the experts in the field. Some are users of technology produced by the experts. If you are a small coffee shop and you purchase a router, you are not an expert and you are not willfully infringing. You just bought a product that some infringer sold you and you reasonably believed could be lawfully purchased and used. But if you are the company producing that router, it must be assumed that you are willfully infringing.
We need to reverse eBay to restore injunctive relief, and we need to make willful patent infringement the rebuttable default for infringing a patent
PTAB, Patent Trolls, Bad Patents, and Data: A Wakeup Call to AIA Apologists
By Josh Malone & Steve Brachmann
October 30, 2017
http://www.ipwatchdog.com/2017/10/30/ptab-patent-trolls-bad-patents-wakeup-aia-apologists/id=89609/
An inventor burns his patent at the USPTO protest. Photo by Julie Pixler.
Since the PTAB declared two of my Bunch O Balloons patents obvious in an institution decision earlier this year, I have visited with many lawmakers and officials to describe my ordeal: six (6) patents, one (1) notorious infringer, five (5) cases in district court, eight (8) appeals to the CAFC, four (4) preliminary injunctions, eight (8) PTAB petitions, four (4) trials instituted, and $18M in legal costs. This is just the beginning as we have not even gotten to trial yet.
There are two reactions that come from lawmakers and officials. The first reaction is from those that did not actively support the America Invents Act (AIA). They are appalled and incredulous that the PTAB is siding with infringers against the examiners and inventors. And they admit they are powerless because of both current patent legislation and the control of the U.S. Patent and Trademark Office (PTO) by interests much more powerful than inventors and voters.
The other reaction comes from those that created and supported the America Infringes Act. To their credit, they have begun to acknowledge the there have been some unintended consequences. But they quickly slip into the mantra that the PTAB is necessary to prevent trolls from asserting “bad patents” with frivolous lawsuits. Lawmakers and officials are now demanding that we inventors provide the data to prove that the PTAB is broken and that reforms will not result in trolls filing frivolous lawsuits with “bad patents.” Challenge accepted.
I ran a few simple queries in Docket Navigator. Readers can check it themselves by following the links below (account required):
4,637 Patents in PTAB (Court/Agency = PTAB)
1,582 Decisions (Determination = Unpatentable OR Not unpatentable)
3,055 Patents in Limbo / No Decision (4,637 – 1,582)
1,343 Defective Patents (Determination = Unpatentable)
239 Compliant Patents (1,582 – 1,343)
85% Patent defect rate according to PTO/PTAB (1,343 ÷ 1,582)
6-8% Patent defect rate according to PTO/OPQA
66 Adjudicated “bad patents” in past 30 years (Determination = Invalid; Remedy = Attorney Fees)
263 Patents upheld in court and challenged in PTAB (Determination = Not invalid AND [Unpatentable OR Not unpatentable])
200 Patents decided wrongly by PTAB (Determination = Not invalid AND Unpatentable)
63 Patents decided correctly by PTAB (263 – 200)
76% Of good patents in district court called “bad patents” by PTAB (200 ÷ 263)
The first thing that informed readers should do is throw out all of the statistics published by the PTO and Lex Machina that report the results of petitions instead of patents. As abused inventors from Zond know, with unlimited serial petitions it is useless to survive one petition if the next one is instituted and takes out the patent. Of the 4,637 patents challenged in the PTAB, 3,055 did not reach final decision and are therefore in limbo. They cannot be counted one way or the other. Of the 1,582 patents with a final written decision, 1,343 were found to have defects by the PTAB. That is an 85% defect rate. Only 239 patents were affirmed to be fully compliant with the statutes by the PTAB. Yet the Office of Patent Quality Assurance (OPQA) claims a 6-8% defect rate. This is consistent with my experience where the examiner cited all the prior art and initialed parallel PTAB trials as references, the OPQA and TC Director are signed off on allowance, the PTO Director signed my patents, and the PTAB is now overruling them – one after another.
Next issue – where are the trolls and the bad patents? Going back to 1987, Docket Navigator shows a mere 66 “bad patents” that were asserted, found invalid, and resulted in an award of attorney fees. Yet the PTAB has killed 1,343 and put another 3,051 into limbo. And what harm did those 66 bad patents do? The prevailing party was made whole. It does not make sense that bad patents could stymie innovation. Any party or attorney stupid enough to assert a bad patent is going to lose a lot of money. This is even more true now that 1) the Federal Trade Commission (FTC) and state legislatures have cracked down on demand letters; 2) federal rules have heightened pleading standards; 3) local rules have evolved to permit summary judgment early in cases; and 4) Octane Fitness gave judges discretion to award fees for exceptional cases. These 66 bad patents were never a threat to our innovation economy, and even if they were, they’ve been fixed without need of any help from the PTAB.
While additional patents have been held invalid by district courts (without incurring sanctions), they are not exceptionally bad and the cases were not frivolous. The economic costs of defending invalid patents are balanced by the costs of asserting valid patents. As for the allegation of nuisance settlements generated by asserting “bad patents,” that is pure speculation as they just as easily might be “great patents” or “okay patents.” If we are going to apply a data-driven approach to policy, we should stick with data, as I have done here, rather than pejorative and unsupported labeling of an uncontested patent as a “bad patent” using fake science.
In our meetings with representatives on Capitol Hill, we have turned the tables and asked that the lawmakers and apologists for the PTAB show us where the “bad patents” are. Instead, they have hearings in which witnesses from the likes of Mapbox complain about being sued for infringement of U.S. Patent No. 6510383 by inventor Martin Jones. The patent has never been found invalid, not even by the PTAB. It is not a bad patent. Not to mention the case was dismissed before Mapbox even had to file a single motion. At the same hearing, the witness from The Clearing House complained about “bad patents”, presumably referring to Leon Stambler’s U.S. Patent No. 5793302 which was never ruled on by a judge or jury. The PTAB invalidated it, but we have found they disagree with the examiners 100% of the time and courts 76% of the time. The House IP Subcommittee could just as well have my nemesis Telebrands testify that I am impeding their progress in knocking-off water toys by asserting my patents – patents which the PTAB invalidated against several PTO examiners and five Article III judges. As shown above 263 patents were found valid in full and fair trials in a court of law and also tried in the shortcut infringer-biased PTAB. Only 63 of them got the same results in both venues. The other 200 the PTAB came to a different conclusion. If the courts are correct then the PTAB is wrong 76% of the time.
That’s some data which should be pretty eye-opening to any PTAB apologists. How soon can it start driving some policy that restores our patent system? Or will the U.S. Supreme Court take it out of Congress’s hands and eliminate the PTAB in Oil States?
PTAB Makes Precedential Its Multi-Factor Approach To Assessing Follow-On Petitions
http://www.ptablitigationblog.com/ptab-makes-precedential-multi-factor-approach-assessing-follow-petitions/
Native Americans Set to Save the Patent System
http://www.ipwatchdog.com/2017/10/09/native-americans-set-save-patent-system/id=88871/
" In fact, at least one technology patent-holder has already done so. A lawyer for the St. Regis Mohawk Tribe told The New York Times that even before the Allergan deal, the tribe agreed to hold patents for a "technology company," which he declined to name."
https://arstechnica.com/tech-policy/2017/09/how-a-native-american-tribe-ended-up-owning-six-key-patents-on-an-eye-drug/
It's definitely a possibility!
Judging by his resume he certainly has the network
In the article I posted yesterday it does comment that there is a tech company that has done just that. Who it is remains to be seen.
Here is the article again
https://arstechnica.com/tech-policy/2017/09/how-a-native-american-tribe-ended-up-owning-six-key-patents-on-an-eye-drug/
I wonder who the tech company is.
Hey, this would be quite an avenue
https://arstechnica.com/tech-policy/2017/09/how-a-native-american-tribe-ended-up-owning-six-key-patents-on-an-eye-drug/
Patent enforcement through the courts in India
https://www.lexology.com/library/detail.aspx?g=8904b710-19e3-4311-a7d8-3eab76237e14
Found this article on patent opposition comparison between countries
https://www.lawteacher.net/free-law-essays/administrative-law/a-patent-opposition-comparison-between-countries-administrative-law-essay.php
I'm with you DeerBalls! I'm in for the long haul as well. Its quite an educational ride and I'm looking forward to seeing how all of these balls in the air will be played out!
Patent owners negatively impacted by PTAB file amicus brief with SCOTUS in support of Oil States
http://www.ipwatchdog.com/2017/09/13/patent-owners-negatively-impacted-ptab-file-amicus-brief-scotus-oil-states/id=87718/
VPLM is one of the patent owners listed
http://www.scotusblog.com/case-files/cases/oil-states-energy-services-llc-v-greenes-energy-group-llc/
Download - Aug 30 2017 Brief amici curiae of Thirty-Nine Affected Patent Owners filed.
See
Page 21
Hope this does not happen here!
PTAB fails to decide IPR within 1-year statutory deadline
http://www.ipwatchdog.com/2017/09/07/ptab-fails-decide-ipr-within-1-year-statutory-deadline/id=87677/
Nyt this site may assist with your dd on Sawyer
https://www.crunchbase.com/organization/walden-university-minneapolis#/entity
I agree. Lets just hope it picks up momentum!
Patent Office Admits to Stacking Judges to Manipulate IPR Decisions
https://www.smithhopen.com/news_detail/670/Patent-Office-Admits-to-Stacking-Judges-to-Manipulate-IPR-Decisions
Federal Circuit’s Concern Regarding PTAB ‘Panel-Stacking’ – Back To The Future?
http://www.jdsupra.com/legalnews/federal-circuit-s-concern-regarding-47336/
Voip-Pal.com, Inc. v. Apple, Inc
Case #: 2:16-cv-00260
Friday, August 25, 2017
30 notice Notice of Appearance Fri 3:33 PM
NOTICE of Appearance by attorney Michael J. McCue on behalf of Defendant Apple, Inc.. (McCue, Michael)
29 motion Withdraw as Attorney Fri 11:29 AM
MOTION to Withdraw as Attorney by Jonathan W. Fountain by Defendant Apple, Inc.. (Fountain, Jonathan)
VOIP-PAL.COM VS APPLE,INC: A CRUSADE AGAINST CORRUPTION !
http://hlquist.libsyn.com
Here’s hoping VPLM will be successful in getting a positive result from the Appl IPR's!
https://www.cnbc.com/2017/08/01/apple-earnings-q2-2017-how-much-cash-does-apple-have.html?recirc=taboolainternal
I don't think they will settle either and if they loose I think they will submit an appeal. I believe It's still a long road ahead but with having new judges, who knows what will happen. Its a new ballgame!
Here's an article on Post-Grant Settlements
Terminating a Post-Grant Proceeding By Settlement Before the Patent Trial and Appeal Board Has “Decided the Merits”
Voluntarily terminating a post-grant proceeding before the Patent Trial and Appeal Board (PTAB) prior to a final written decision may be appropriate in situations where the parties have agreed to settle the proceeding. Termination due to settlement is a common occurrence in post-grant proceedings. Through October 2016, approximately 17% inter partes review (IPR) proceedings were terminated through settlement before institution, and approximately 13.5% were terminated after institution. Similarly, approximately 14.5% were terminated through settlement before institution, and approximately 13% were terminated through settlement after institution. See October 2016 AIA Trial Statistics.
35 U.S.C. § 317 governs the parties’ ability to voluntarily and jointly terminate an IPR proceeding. 35 U.S.C. § 317(a) provides, in part:
An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed (with added emphasis).
35 U.S.C. § 327 contains similar provisions for post-grant review (PGR) petitions, which also applies to covered business method (CBM) petitions. Sections 317 and 327 along with 37 C.F.R. § 42.74 specify several threshold requirements for joint termination through settlement, including both parties requesting authorization to file the request, providing a true copy of the settlement agreement, and a statement regarding certification of related collateral agreements and understandings. See 35 U.S.C. § 317(b), 37 C.F.R. § 42.74(b). Adhering to these requirements, however, does not guarantee that the PTAB will grant the termination request. The PTAB has discretion to grant or dismiss the request based on whether “the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). When a panel issues a final written decision, the panel has “decided the merits” of the proceeding.
In reviewing the legislative history of the statute, the language of Sections 317 and 327 can be contrasted with the settlement provision of the Patent Reform Act of 2007 (S. 1145, 110th Cong. (2007)), which was the predecessor to the Smith-Leahy America Invents Act, and which was amended by the Senate Judiciary Committee to include Section 332, which stated, in part:
A PGR proceeding shall be terminated with respect to any petitioner upon the joint request of the petition and the patent owner, unless the Office has decided the matter before the request for termination is filed (with added emphasis). Senate Report No. 110-259 (2008).
The “decided the matter” language differs from the corresponding settlement provision of the House version of the Patent Reform Act of 2007 (H.R. 1908, 110th Cong. (2007)), which was amended by the House Judiciary Committee to provide settlement of a post-grant proceeding “unless the Patent Trial and Appeal Board has issued a written decision before the request for termination is filed” (with added emphasis). House Report No. 110-314 (2007). In the Patent Reform Act of 2011, which reintroduced patent reform legislation to Congress, the “decided the matter” language of the settlement provision for post-grant proceedings was changed to “decided the merits.” Patent Reform Act of 2011, S. 23, 157 Cong. Rec. S936, S941 (2011). There is no legislative history explaining the reasons for this change.
During the comment period on proposed rulemaking for PTAB trials under 37 C.F.R. § 42.74, comments were submitted regarding the PTAB’s discretion to terminate a proceeding upon settlement by the parties. In response, the U.S. Patent and Trademark Office (USPTO) stated that termination may be conditioned on the filing of a related paper, such as when the challenged claims are clearly unpatentable or the patent owner acknowledges they are unpatentable. See Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48611, 48649. For example, “termination appropriately may be conditioned on the submission of a disclaimer of the claims in dispute.” Id.
PTAB panels have determined that a joint termination request must be filed before the oral hearing to be considered for grant. In Blackberry Corp., et al. v. MobileMedia Ideas, LLC, the parties field a joint motion to terminate the proceeding nearly two months after oral argument. Blackberry Corp., et al. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 64 (PTAB Jan. 21, 2014) at 2. The panel granted the motion only with respect to the Petitioner (Blackberry). Regarding the Patent Owner, the panel determined that issuing a final written decision was appropriate because the issues for trial had been briefed fully at the time the parties moved to terminate the proceeding. Id. at 3. Similarly, In Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., the panel denied the joint motion to terminate the proceeding because it was filed after the oral hearing. Kinetic Technologies, Inc. v. Skyworks Solutions, Inc., IPR2014-00690, Paper 43 (PTAB Oct. 19, 2015) at 20. The Kinetic panel found that settlement was concluded after the oral hearing and a point at which the panel had “substantially decided the merits of the proceeding.” Id. at 20-21. In Apple, Inc. v. OpenTV, Inc., the panel denied the requests for termination, finding they were filed at an “extremely late date in each proceeding”— after all briefing was complete and after the oral hearings were held. Apple, Inc. v. OpenTV, Inc., IPR2015-00969, IPR2015-00980, IPR2015-01031, Paper 29 (PTAB Sep. 10, 2016) at 4. The Apple panel had not yet issued a final written decision, but had “deliberated and decided the merits of each proceeding” before the requests were filed. Id.
Some PTAB panels have also denied termination requests filed prior to oral hearing as being belated. In Interthinx, Inc. v. Corelogic Solutions, LLC, the panel granted-in-part a termination request filed on the eve of oral hearing because it was submitted too late in the proceeding. Interthinx, Inc. v. Corelogic Solutions, LLC, CBM2012-00007, Paper 47 (PTAB Nov. 12, 2013). The panel granted the request, but only with respect to the Petitioner (Interthinx) because the matter in question was “briefed fully and ready for oral hearing at the time the parties moved to terminate.” Id. Further, the panel found that the proceeding was in an “advanced stage”, and rather than terminate the proceeding, a final written decision would be issued. Id.
Settlement in a post-grant proceeding should be agreed upon and joint requests for termination submitted to the PTAB as early as possible in the proceeding to avoid denial due to the late stage in the proceeding. The PTAB bases its discretionary authority to issue a final written decision on the amount of evidence that has been presented in the case at the time the joint termination request is filed and likely the amount of its resources used up to the filing of the request. Using its discretion in this manner is fairly consistent with how courts generally issue decisions “on the merits.” While there have been instances of a panel granting termination of a proceeding just before and after the oral hearing, the majority of decisions show that the likelihood of denial of a joint request to terminate increases as proceedings progress closer to the due date for a final written decision. See e.g., Clio USA, Inc. v. The Procter & Gamble Co., IPR2013-00438, Paper 57 (PTAB Oct. 31, 2014)(request granted after oral hearing); Sony Corp. v. Tessera, Inc., IPR2012-00033, Paper 46 (PTAB Dec. 20, 2013)(request granted just before oral hearing held). For example, panels have determined that the filing of a request for termination is late once the issues have been “briefed fully” and an oral hearing has been held or is ready to be held. According to the rules of practice before the PTAB, no new arguments can be presented at oral hearing. Thus, all evidence on which the decision will be made is of record prior to the oral hearing. Therefore, seeking settlement and moving for termination prior to institution or at an early stage of trial improves the chances of getting the proceeding terminated.
http://www.jdsupra.com/legalnews/terminating-a-post-grant-proceeding-by-10635/
Here is an article on IPR Appeals
IPR Appeals: Pendency And Success Rates At Fed. Circ.
February 8, 2017, 12:19 PM EST
Law360, New York (February 8, 2017, 12:19 PM EST) --
Kerry S. Taylor
Daniel A. Kamkar
In our first article, we analyzed how the Patent Trial and Appeal Board treated inter partes reviews that were remanded from the Federal Circuit. In this article, we provide an analysis of each IPR appeal decided by the Federal Circuit in 2016, along with statistics on the timing and success rates of those IPR appeals.
Inter partes reviews are designed to quickly and efficiently settle patent validity disputes on novelty and obviousness. The timing for IPR proceedings is set forth by statute. Therefore, the overall time to reach a final written decision on validity is highly predictable — it takes approximately 18 months from the filing of an IPR petition to reach a final written decision. Either party may appeal the final written decision to the Federal Circuit. The overall time to reach a decision by the Federal Circuit is not strictly controlled, and the timing varies from case to case. Litigants entering into IPR proceedings often need to determine the total amount of time through appeal that the proceeding will be pending.
To help litigants forecast the amount of time an IPR appeal will take, we analyzed each IPR appeal decided by the Federal Circuit in 2016, and compiled statistics on the timing and success rates of those IPR appeals. In summary, it took an average of 15.4 months to reach a Federal Circuit decision after conclusion of an IPR proceeding, and the Federal Circuit affirmed 75 percent of IPR final written decisions. The details of our empirical study are provided below.
Figure 1
TITLE
Figure 1 shows the pendency distribution of all appeals that were the subject of Federal Circuit decisions in 2016 (written opinions and Rule 36 summary affirmances) on an appeal of an IPR’s final written decision. This pendency period describes the time it takes the Federal Circuit to issue a decision on an appeal once the matter leaves the hands of the PTAB. Pendency in this study is measured by the time between a Federal Circuit decision and the later of the PTAB’s corresponding final written decision or decision on rehearing if requested.[1]
On average the Federal Circuit took 15.4 months to publish a decision. The standard deviation of pendencies was 3.3 months. There was a 68 percent probability that a decision would issue within 12.1 and 18.7 months, and a 95 percent probability that a decision would issue within 8.8 and 22.1 months. Additionally, the shortest and longest pendencies in 2016 were 8.5 and 23.5 months, respectively.
The average time period between a PTAB final written decision and a PTAB decision on rehearing (not shown) was 2.7 months. This means that if a rehearing is requested at the PTAB, a party will have to wait on average 18.2 months after a PTAB final written decision before the Federal Circuit’s decision. In 2016, all PTAB decisions on rehearing were denials of the request.
Figure 2
TITLE
Figure 2 shows the distribution of pendencies for 2016 Federal Circuit decisions divided into written opinions (blue lines) and Rule 36 summary affirmances (green boxes). On average the Federal Circuit took 17.2 months to issue a written opinion. The standard deviation of written opinion pendencies was 3.4 months. There was a 68 percent probability that a written opinion would issue within 13.8 and 20.5 months, and a 95 percent probability that a written opinion would issue within 10.4 and 23.9 months. The shortest and longest pendencies of 2016 were 8.5 and 23.5 months, respectively.
On average the Federal Circuit came to a decision 3.3 months more quickly for Rule 36 summary affirmances, issuing them on average in 13.9 months.[2] The standard deviation of Rule 36 pendencies was 2.3 months. There was a 68 percent probability that a Rule 36 summary affirmance would issue within 11.5 and 16.2 months, and a 95 percent probability that a decision would issue within 9.2 and 18.6 months. Additionally, the shortest and longest lead times of 2016 were 8.5 and 20.0 months, respectively.
If a rehearing is requested at the PTAB, a party will have to wait on average 19.8 months after a PTAB final written decision before a Federal Circuit written opinion, and 16.6 months before a summary affirmance.
Figure 3
TITLE
Figure 3 shows the average pendency for Federal Circuit decisions from each month of 2016. Although there is an expected month-to-month variability throughout the year, the Federal Circuit’s average pendency each month generally kept around the 15.4 month average with a slight, yet statistically insignificant, upward trend later in the year. This figure shows that the Federal Circuit is maintaining its timing for handling IPR appeals to a fairly constant period, with no significant indication that backlogged cases are increasing delays.
Figure 4
TITLE
Figure 4 shows the results of the 99 panel decisions from the Federal Circuit in 2016 that ruled on an IPR final written decision from the PTAB (en banc decisions and appeals from the PTAB without final written decisions were excluded). In 53 percent of the decisions, the Federal Circuit affirmed the PTAB’s final written decision by a summary affirmance under Rule 36, and 22 percent of the time the Federal Circuit affirmed by a written opinion. Thus, 75 percent of appeals were affirmed. Only 3 percent of the Federal Circuit’s decisions reversed a PTAB’s final written decision and took the matter out of the PTAB’s hands. The remaining 22 percent of the time, the Federal Circuit remanded the case back to the PTAB in some way: 6 percent (about a quarter of the remaining 22 percent) vacated and remanded the entire final written decision, and 16 percent (about three quarters of the remaining 22 percent) were mixed decisions vacating and remanding part of the final written decision. Of these mixed decisions, 94 percent also partially affirmed the PTAB’s final written decision.
This shows that litigants pursuing an appeal in the hopes of reversing the outcome of the PTAB’s decision met little success in 2016 (75 percent full affirmance versus 3 percent full reversal), and even mixed outcomes are typically affirmed in part. If this trend continues into the following years, future IPR appeals will continue to have low likelihoods of success. Even when the Federal Circuit does find fault with a PTAB decision, litigants typically have to face the PTAB again for at least a partial rehearing. With these outcomes, IPR litigants must understand that an appeal to the Federal Circuit will likely either uphold the PTAB’s decision or extend litigation on at least some issues at the PTAB.
Conclusion
An IPR litigant can expect to wait an average of 15.4 months before the Federal Circuit comes to a decision. The Federal Circuit issues summary affirmances by Rule 36 in around 13.9 months, while written opinions take longer at around 17.2 months. If a rehearing is requested at the PTAB, the average pendency of all decisions is extended to 18.2 months. Furthermore, in 2016 the Federal Circuit affirmed 75 percent of the PTAB’s final written orders from IPR appeals, with 22 percent affirmed by written opinions and 53 percent by Rule 36 summary affirmances.
These results demonstrate that an IPR proceeding that goes to appeal will take roughly 2.5 to 3 years to complete, but the Federal Circuit will typically leave the PTAB’s final written decision intact. The results of the empirical study presented in this paper should allow litigants to better forecast the likely timing and success rates for future Federal Circuit appeals of IPR final written decisions.
—By Kerry S. Taylor and Daniel A. Kamkar, Knobbe Martens Olson & Bear LLP
Kerry Taylor, Ph.D., is a partner in the San Diego office of Knobbe Martens and leads the firm’s efforts in IPR in the life sciences, biotechnology and chemical industries. Daniel Kamkar is an associate in the firm's San Diego office.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
[1] A party may request rehearing of an adverse final written decision. This is a request for the PTAB to reconsider its decision. If such a request is made, the timing for appeal to the Federal Circuit begins upon the PTAB’s issuance of a decision on the request for rehearing.
[2] The Federal Circuit issued Rule 36 summary affirmances of IPR decisions an average of six days after hearing oral arguments.
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Here is an article on IPR Appeals
https://www.law360.com/articles/884916
VPLM adds backup counsel
Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner Voip-Pal.com, Inc.
(“Voip-Pal”) hereby provides notice that it is designating registered patent
practitioner Stephen Melvin (Reg. No. 50,467) as additional backup counsel in this
proceeding.
Stephen Melvin
Computer Engineer and Patent Agent
Computer engineer with a background in microprocessor architecture, network processor design and real-time embedded systems. USPTO registered patent agent with extensive experience prosecuting patents as well as working as a consulting and testifying expert in patent litigation and licensing.
Zytek Communications Corporation
President
Zytek Communications Corporation
1983 – Present (34 years)
Founded Zytek as an engineering, consulting and small-scale manufacturing company. Zytek currently provides consulting services related to intellectual property litigation and licensing, patent prosecution as well as services related to the design, implementation and testing of embedded systems. Zytek’s general areas of activity have also included source code analysis and comparison, forensic hard disk analysis and file recovery, industrial control and measurement, Internet related services and computer engineering research services.
Order Conduct of Proceeding
Trials@uspto.gov Paper No. 43
571-272-7822 Filed: June 22, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
APPLE INC.,
Petitioner,
v.
VOIP-PAL.COM, INC.,
Patent Owner.
____________
Cases IPR2016-01198 and IPR2016-01201
Patents 9,179,005 B2 and 8,542,815 B21
____________
Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
JOHN A. HUDALLA, Administrative Patent Judges.
COCKS, Administrative Patent Judge.
ORDER
Conduct of Proceeding
37 C.F.R. § 42.5
1 This Order pertains to both noted proceedings. The Board exercises its
discretion to issue a single Order for entry in each proceeding. The parties
are not authorized to use this style heading for any subsequent papers.
1. Introduction
On June 20, 2017, a call was held between counsel for the respective
parties and Judges Cocks, Chagnon, and Hudalla. Apple Inc. (“Petitioner”)
was represented by Adam Seitz. Voip-Pal.com, Inc. (“Patent Owner”) was
represented by Brent Babcock. The purpose of the call was to discuss
Petitioner’s request for authorization to file a motion to expunge pages 2–15
of Patent Owner’s Motion to Exclude in each proceeding (Paper 402)
2. Discussion
During the call, Petitioner indicated that it believed that the majority
of Patent Owner’s Motion to Exclude constituted an unauthorized sur-reply
to the Petitioner’s Reply to Patent Owner’s Response (Paper 34) rather than
setting forth appropriate reasons to exclude content of the record. Petitioner,
thus, requested authorization to file a motion to expunge portions of the
Motion to Exclude. Patent Owner opposed Petitioner’s request. According
to Patent Owner, even if portions of the Motion to Exclude do amount to
substantive response to Petitioner’s Reply, the panel could deny the Motion
to Exclude, if it believes that is appropriate, rather than entertain the extreme
remedy of expungement.
Motions to exclude are filed to preserve evidentiary objections
previously made on the record; they “must identify the objections in the
record in order and must explain the objections.” 37 C.F.R. § 42.64(c).
2 The identified Paper numbers in this Order are the same for each
proceeding.
3 Patent Owner had arranged for a court reporter to transcribe the call. When
a transcript of the call is available, Patent Owner should file a copy of the
transcript using its next available exhibit number.
Importantly, such motions are directed to “evidence” that a party considers
to be inadmissible. Id. They do not pertain to a party’s arguments. In that
respect, the panel advised the parties on the call that a motion seeking to
exclude an opposing party’s argument is beyond of the scope of § 42.64 and
will not be successful. In reviewing Patent Owner’s Motion to Exclude in
each proceeding, we observe that various portions of the Motion seek to
exclude Petitioner’s “citations” to evidence of record, rather than the
underlying evidence itself. See, e.g., Paper 40, 6, 8, 11, 14, 15. Although
we do not authorize, at this time, a motion to expunge, we advise the parties
that, to the extent that Patent Owner’s Motion to Exclude amounts to an
unauthorized sur-reply or seeks to exclude Petitioner’s argument in its
Reply, such content is not proper for a motion to exclude.
Order
It is
ORDERED that Petitioner is not authorized to file a motion to
expunge in connection with Patent Owner’s Motion to Exclude (Paper 40);
and
FURTHER ORDERED that any opposition to the Motion to Exclude
is due as set forth in the Scheduling Order (paper 7)