ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., slip op. IPR2013-00038 (PTAB Apr. 26, 2013)
In ChiMei Innolux Corp. v. Semiconductor Energy Lab. Co., Ltd., IPR2013-00038, Notice 18, Order, Conduct of the Proceeding (April 26, 2013), the PTAB held that a party’s failure to adequately describe an anticipated motion may be grounds for dismissal or exclusion of the motion(s) from the motion list. By adequately describing the purpose and reasons for a motion, the anticipated moving party can provide sufficient notice to the PTAB and non-moving party.
Generally, the PTAB conducts a telephonic conference within one month of trial institution. The purpose of this conference is to discuss the Scheduling Order and any motions that a party anticipates filing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012). To facilitate discussion of any anticipated motions, the expected moving party must submit a motions list to the PTAB and the parties no later than two business days before the conference. Importantly, the Trial Practice Guide states that “[a]n accurate motions list is necessary to provide the Board and the opposing parties adequate notice to prepare for the conference call and to plan for the proceeding.” Id. (emphasis added). Indeed, the PTAB indicated that a motion description that does not provide adequate notice is grounds for “dismissing the motions list.” Order at 2.
In this case, patent owner Semiconductor Energy Lab (“SEL”) submitted a timely motions list describing two motions it anticipated filing. Notice 17 (April 18, 2013). The second, a request for additional discovery, was explained as noted below:
2. Motion to Take Discovery Related to the Identification of Real Parties-In-Interest Under 35 U.S.C. § 312(a)(2)
Depending on the Board’s decision on Patent Owner’s Request for Rehearing, Patent Owner may move to take additional discovery ([t]his includes, potentially, a reasonable number of requests for production, interrogatories, requests for admission, and depositions of persons knowledgeable of the relevant facts) regarding the identification of real parties-in-interest with respect to the current Petition. The identification of the real parties-in-interest in the Petition is required under 35 U.S.C. § 312(a)(2). More specifically, the additional discovery may seek information concerning the involvement of Chimei Innolux Corporation, Chi Mei Optoelectronics USA, Inc., Acer America Corporation, ViewSonic Corporation, VIZIO, Inc., and Westinghouse Digital, LLC, in the preparation and filing of the current Petition.
During the conference call, the PTAB noted that this explanation failed to give adequate notice for the Board or opposing counsel to “understand the proposed motion.” Order at 2. Rather than dismiss the motions list in this instance, however, the PTAB considered information provided during the conference call to determine whether to authorize the requested motion for discovery regarding the real party-in-interest.
Ultimately, the PTAB authorized SEL’s requested motion regarding the real party-in-interest, but limited the motion to requesting discovery and information from only ChiMei Innolux (presumably because ChiMei is the only IPR petitioner), rather than the additional co-defendants in a related litigation. The PTAB further reiterated a reoccurring theme in PTAB orders regarding motions for additional discovery: SEL’s motion must explain how its discovery requests meet the “interest of justice” standard. In addition, the PTAB referred SEL to its decision in IPR2012-00001, Paper 26 at 6-7, discussing the interest of justice standard. For more information regarding Fish & Richardson’s analysis of the “interest of justice” standard, click here: USPTO clarifies “routine discovery” permitted in patent trials before the PTAB.
The PTAB’s Order demonstrates that it closely scrutinizes the explanation provided for a motion listed on the motions list submitted before the first conference call. While fairly robust in form, SEL’s explanation of its anticipated motion seeking discovery related to the real party in interest was criticized for lacking appropriate substantive detail regarding the reason such discovery was required to satisfy the interests of justice. SEL would have improved its position by stating that the purpose of the additional discovery regarding the real party in interest was to ensure that the scope of any potential estoppel in a co-pending district court case, Semiconductor Energy Laboratory Co., Ltd. v. Chimei Innolux Corp., et al., SACV12-0021-JST (C.D. Cal.), is properly applied. The PTAB’s order, however, does not reveal the rationale presented by SEL to justify its request to file a motion for additional discovery. To avoid any potential waiver, a party that anticipates filing additional motions should ensure that both the description and the ultimate purpose of the motion are adequately explained.
The fact that SEL sought this additional discovery (and originally sought discovery regarding the involvement of the district court co-defendants in ChiMei’s inter partes review petition) is significant for another reason. Specifically, it is one of the dangers for plaintiffs that file suit against multiple defendants. The availability of inter partes review may allow a single district court defendant to pursue an invalidity strategy at the PTO. Assuming estoppel under 35 U.S.C. § 315(e)(2) does not apply to the other co-defendants, they are free to pursue invalidity defenses before the district court. This is true even if the result of the inter partes review requested by a single co-defendant is not dispositive of the infringement claims in district court case. In essence, a patentee filing a multi-defendant case must consider the likelihood that estoppel resulting from inter partes review will not prevent invalidity arguments from moving forward in the district court.
 After a final written decision in an inter partes review, the real party in interest may not assert in a civil action arising under 28 U.S.C. § 1338 “that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during the inter partes review.” 35 U.S.C. § 315(e)(2).