CRS v. Frontline (CBM2012-00005, Paper 31): Motions Lists, Claim Construction and Schedule Changes

The initial conference call is the first time the parties and the panel discuss an instituted trial. CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc., CBM2012-00005, Paper 31, entered February 13, 2013, records how the Board handled that call in an early covered business method review of U.S. Patent 6,675,151. The only issue for trial was whether six claims were unpatentable under 35 U.S.C. § 101.

Background

The call took place on February 7, 2013. Under the 2012 Trial Practice Guide, the initial call is used to discuss the scheduling order and any motions the parties expect to file. To prepare, both parties filed motions lists.

• CRS, the petitioner, sought one motion: to expedite all seven due dates. Its list ran nearly six pages of facts, argument and a proposed schedule.
• Frontline, the patent owner, asked to postpone the call. It also asked for a separate process to resolve claim construction before other due dates, a motion to extend the first three due dates, discovery tied to the claim construction process, and a possible motion to amend.

What the Board decided

Motions lists are notices, not motions. Citing 37 C.F.R. § 42.21(a) and the Trial Practice Guide, the Board explained that a motions list gives the Board and the opponent enough notice to prepare for the call. It should state each proposed motion in a short, concise statement. Both lists failed that test: CRS’s list was “the motion itself,” and Frontline’s request to postpone the call was in substance a motion. Because counsel said they had not appreciated this, the Board did not dismiss the lists. It warned that non-compliant lists in future could be dismissed or expunged.

No separate claim construction phase. The Board had already construed certain terms in its institution decision. If Frontline disagreed, it could explain, with evidence, why another construction should apply in its patent owner response, the ordinary place for that argument. Frontline gave no good reason to depart from that course, so the request was not authorized. Frontline then withdrew its related discovery requests.

Motion to amend deferred. At the Board’s suggestion, discussion of any motion to amend was postponed to a further call set for February 21, 2013.

Schedule unchanged. Because the trial concerned only § 101, the Board had already set a compressed schedule.

• Frontline’s request to extend Due Dates 1–3 failed for lack of an adequate factual basis showing good cause under 37 C.F.R. § 42.5(c)(2). The Board noted that Frontline had known of the challenge since the petition was filed nearly five months earlier, and the issues had narrowed since.
• CRS’s request to expedite all due dates also failed. The existing schedule struck a proper balance under 37 C.F.R. § 42.1(b).

The Board reminded the parties that they could stipulate to different Due Dates 1–3. It said it would consider moving Due Dates 4–7 earlier if they agreed on the first three.

Why it matters

• Keep motions lists short. A list identifies the relief and its basis in a sentence or two. Argument belongs in the motion, if one is authorized.
• Claim construction runs through the normal briefing. The Board does not hold separate construction proceedings. A party that disagrees with the institution decision’s construction addresses it in its response, with evidence. See claim construction during inter partes review.
• Schedules are hard to move. Extensions require good cause under § 42.5(c)(2), and a request to compress the schedule faces the same balancing. The parties’ own stipulation on early dates is the practical tool, as in the SAP v. Versata scheduling order.

Practice on initial conference calls and motions lists has evolved, so readers should check the current Trial Practice Guide. The CBM program ended on September 16, 2020.

Key takeaways

• A motions list should briefly identify proposed motions; both parties’ lists improperly argued the merits.
• The Board refused a separate claim construction phase; construction is addressed in the patent owner response.
• Neither the request to extend nor the request to expedite was granted in this § 101-only trial.
• Parties could stipulate to changes in Due Dates 1–3, and agreement might allow later dates to move earlier.