CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc.

Paper 31, February 13, 2013

CBM2012-00005 (Patent 6,675,151)

[Motions lists must contain only short statements providing enough information to communicate the nature of proposed motions]

FACTS

In preparation for the initial conference call following the decision to institute the CBM review, Petitioner (CRS Advanced Technologies, Inc.) and Patent Owner (Frontline Technologies, Inc.) filed lists of proposed motions. In their lists, Patent Owner requested the postponement of the conference call, and a separate claim construction proceedings, while the Petitioner requested an expedited schedule.

HOLDING

The Board found that both parties misunderstood the requirements for the motions list as set out in 37 C.F.R. § 42.21(a) and 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012). The Board reiterated that such a list should contain only a short statement providing information necessary to understand the nature of the proposed motions. The Board pointed out that the Petitioner’s list contained six pages of facts and arguments supporting its motion for expedited schedule, while the Patent Owner’s lists contained a request to postpone the initial conference call. Both of these in effect amounted to motions themselves and were improper.

As to the Patent Owner’s request for claim construction proceedings, the Board found that it was unnecessary because the Board set forth a construction of certain terms as part of its decision to institute the CBM review. Patent Owner can explain its disagreement with any such construction in its post-institution response.

As to the Patent Owner’s motion to extend due dates, the Board noted the Patent Owner had five month since the Petition was filed to consider the challenges to its patent and did not show good cause for extending due dates.

As to the Petitioner’s motion to expedite the schedule, the Board noted that because of the streamlined nature of the proceedings (challenging 6 claims as unpatentable under 35 U.S.C. § 101), the schedule was already compressed. The Board reminded the parties that they may stipulate different due dates 1-3 per 37 C.F.R. § 42.1(b).

TAKEAWAY

Motions lists must contain only short statements providing enough information to communicate the nature of proposed motions.

A party must show good cause of it requests extension of deadlines.

Expediting dues dates may not be necessary in already streamlined proceedings.

To view full Order click here.