37 C.F.R. § 42.8 provides that petitioners and patent owners must identify each real party-in-interest for that party, related matters including any other judicial or administrative matter that would affect, or be affected by, a decision in the proceeding, and counsel and service information. Petitioners are required to file their mandatory notices as part of the petition, and patent owners are required to file their mandatory notices within 21 days of service of the petition. If the information required to be identified in 37 C.F.R. § 42.8(b) changes, updated mandatory notices are required to be filed within 21 days of the change.
Biodelivery Sciences Int’l, Inc. v. Monosol RX, LLC, IPR2015-00165, Paper 66 (PTAB Feb. 11, 2016). The Board expunged petitioner’s updated mandatory notice for being improperly argumentative. Rather than merely identifying an allegedly related Board inter partes reexamination decision, the mandatory notice quoted portions of the decision that were considered pertinent and implicitly explained why those portions were relevant to the IPR proceeding. An appropriate notice simply would have noted that the Board issued a decision in a related proceeding. Petitioner should not have turned the mandatory notice into a briefing opportunity to advocate the conclusion it urges in the IPR proceeding.
Masterimage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 81 (PTAB Jan. 14, 2016). The Board expunged patent owner’s supplemental mandatory notices because patent owner turned the mandatory notices into a briefing opportunity to advance the conclusion it urges in the matters pending before the Board. Patent owner misused the filing of a mandatory notice under 37 C.F.R. § 42.8(b)(2) with regard to related matters by specifically highlighting and discussing the substantive content of an initial determination in an ITC proceeding. An appropriate notice simply would have noted that an initial determination was made in the ITC proceeding.
InnoPharma Licensing, Inc. v. Senju Pharmaceutical Co., Ltd., IPR2015-00902, Paper 82 (PTAB Apr. 18, 2016). The Board expunged the trial transcript from a related district court litigation that was submitted with patent owner’s updated mandatory notices. Although the Board’s rules contemplate a motion for late submissions of supplemental information, “more than one month after the date the trial is instituted,” a party contemplating such a motion “must request authorization to file a motion to submit the information.” The rule relating to updated mandatory notices is not an alternative vehicle by which a party may introduce supplemental information into the record. The Board expunged the trial transcript, noting that patent owner did not request authorization to submit the trial transcript.
Aerospace Comms. Holdings Co., Ltd. v. The Armor All/Step Prods. Co., IPR2016-00441, Paper 7 (PTAB May 20, 2016). The Board ordered additional briefing concerning petitioner’s request to submit amended mandatory notices. Petitioner requested the Board’s permission to update the real party-in-interest (RPI) identification in its mandatory notices to include two additional entities. Petitioner asserted a factual and legal basis as to why those two entities were not identified as RPIs at the time the petition was filed, but after considering patent owner’s preliminary response, petitioner indicated that it would be willing to list them as RPIs to reduce the issues in dispute. Patent owner opposed petitioner’s request as being contrary to the Board’s rules, and argued that no adequate basis existed to waive those rules. The Board ordered petitioner to identify the explicit basis in the rules that provided the Board with authority to authorize petitioner’s request, or provide an explanation as to why specific rules should be waived.