One of the most common mistakes parties make in the new Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings is failing to seek Board authorization to file a motion. Many practitioners incorrectly assume that the way to request relief of any sort is to simply file a motion. But what these practitioners fail to realize is that they must first obtain the Board's permission (authorization) to even file the motion. Moreover, obtaining the Board's permission to file a motion doesn't mean that you are automatically entitled to the relief requested; it simply means that the Board will consider your motion (which the Board may ultimately deny on the merits).
General Rule: Prior Authorization Required
The general rule governing prior Board authorization to file a motion states:
Prior authorization. A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.
37 C.F.R. § 42.20(b).
Exceptions to the Rule
Exceptions to the "prior authorization" rule are scattered throughout the Board Rules and Trial Practice Guide. Unfortunately, the Board has not listed in one place all of the exceptions to § 42.20(b).
Here I present my best attempt at listing all motions and other actions that do *not* require prior Board authorization, based on current written policy. There may be others, but these are the ones expressly mentioned somewhere in the Board Rules or Trial Guide.
- Motions to exclude evidence. (§ 42.64(c))
- Requests for rehearing. (§ 42.71(d))
- Additional discovery, if agreed to between the parties. (Final Rule at 48613)
- Taking (but not submitting) video-recorded testimony, if agreed to between the parties. (Final Rule at 48613)
- Taking uncompelled deposition testimony outside the United States, if agreed to between the parties. (Final Rule at 48613)
- Taking routine discovery within times set in the Scheduling Order. (Trial Guide at 48761)
- Motions where it is "not practical to seek prior Board authorization," including motions to seal and motions filed with a petition, such as motions to waive page limits. (Trial Guide at 48762)
- Observations on cross-examination. (Trial Guide at 48763)
- First motion to amend patent, but owner is still required to confer with the Board before filing the motion. (Trial Guide at 48766)
Please post a comment or email me in case I missed anything.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.