126/2014
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`nun.” uurrrrt
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`417?“-
`ItIttlflltllIIit a.
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`20 Sep12u17 Aug 14
`2013 21m 2
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`APR AUG
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`Hate
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`5
`
`Ihdp:le.uspto.gcvlplboards/bpaiiprszsp
`
`l 9.15
`
`Patent Review Processing System (PRPS)
`
`
`PATENTS TRADFMARKS IP LAW& POE iCY aFEOIIJUC'VS 8: SE ' WVENTORS KEE‘flr’S&i'~iC-TlCFS FAQS KIDS ABOTFTUS
`
`
`Patent Review Processing System (PRPS)
`
`PRPS (Patent Review Processing System) is the Board's e—filing (EF) and case management (CM) system for trial proceedings.
`Direct Link (fwebrzm40817'025907Ihnps:Ilptabtrialsusptogovg .
`
`- For questions regarding PRPS, please call the Board at (571) 272-7822. Support is provided Monday through Friday
`(except federal holidays} from 8:30 am. to 5:00 pm. Eastem Trme.
`
`Notices
`
`PRPS change effective July 12, 2014:
`
`PRPS users who have a session that is idle for 30 minutes or more-and want to continue the session need to close their
`browser, reopen their browser to access the PRPS site and log back in. You will not receive a reminder that your session has
`been idle for 30 minutes or more. If you had entered information on the PRPS page without saving. you will lose the information.
`If you have saved your information, then it will be available when you log back in. For additional information, see FAQs A15, A16,
`A17, and A18.
`
`A future release will provide a warning message when the user is idle before the 30 minutes time out is reached.
`
`If you have any questions, you can contact the PTAB assistance line at 571-272-7822.
`
`Suggestion Box
`
`As PRPS is a developing system, suggestions for improvement provide important input into its future design. After seeing PRPS
`work, you may have suggestions tor improving it. if you have suggestions, please send them to PRP -
`ti n
`it
`:PRP ~Su
`estions
`Li
`to DV .
`
`General Information
`
`:Irvm-wus to. ov-t rboardsfb ail uick start
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`tart
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`re
`a e
`[we r 0140517025907m JMwwus to. o rt moar slb aifinformation related to
`- For technical reasons, the size limit for an uploaded document is currently limited to 25 megabytes. fig FAQ A4
`MeDIgOMClBt 79g5907fht_tg :lnwwusgtogovfiplboard §fbgailprQsIspi .
`lntemet Explorer 8 should be used for all filings as a petitioner or patent owner. A security question is asked at the initial
`stage (please answer "no") and the finance stage (please answer "yes"). Public documents may be viewed, however,
`using lntemet Explorer 3, Firefox 13, Chrome 21, or Safari 6.
`- Video
`
`uide 02 14 14. d
`
`-
`
`I
`I
`
`[.5231 Rgsglgtign (MebIZm40317025907mggifr‘lmlix-1.gsgto.govlgsxgeanRPfiPromo-Helrxwmvi
`1ng Rfiglgflgrt Menrgm40317025907mttg:rlhelix-1.usgto.govrasxgenrprengromoifgag.wmv) (HD)
`
`Technical Issues
`
`1. Only PDF and MPEG format files (MPEG, MPG, MP1, MP2, MP3, MlA, MZA. M1V, MFA, MPV) may be uploaded in
`PRPS. Password-protected files will not be accepted. For text documents. such as MS Word® documents, users are
`encouraged to convert the document directly into a text—searchable PDF file, rather than printing the document and scanning it in
`as a PDF file.
`
`2. PRPS sends an automatic email notification to the parties whenever a document is filed in a case. To viewthe document, you
`must access PRPS. Open the applicable case in your docket, and select the document.
`
`3. To request a conference call for a particular case (rag, to request authorization to file a motion), contact the Board at
`T ‘
`I
`t
`.
`v rrr
`ilto‘T '
`. The email should copy the other party or parties to the proceeding, indicate generally
`the relief being requested or the subject matter of the conference call, state whether the opposing party or parties oppose the
`request, and include times when all parties are available. Unless otherwise authorized. do not include attachments in the email
`and do not use the Tria s@usptg ggv (ma'lto:Tria §@uspto.gov} email address for substantive communications to the Board.
`Parties may also contact the Board by telephone at (571) 270-7322.
`4, Effective March 19, 2013, new fees will be charged for filing a petition for an inter partes review, postgrant review, or covered
`business method patent review. See Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212, 4291 (37 C.F.R. § 42.15), available
`at ht :Ilwww.
`o. ov/fds s] k rFR-2013-01-18!
`fr 013-00319, df Mela/20140817025907'mtt
`:rrvwvw.
`
`
`01-15!pdflg013-00§19.Qdfl ; also see FAQs ES-ET.
`
`5. Effective March 16. 2013, an applicant for a first inventor-to-file patent may file a derivation petition. See FAQs I1-l5.
`
`
`
`CU% St 7003
`
`https:rMeb.archive.orgrweb120140817025907Ihttp:fwww.uspto.govliplboardslbpailprps.jsp
`
`
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`AGILA V. CU% Si
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`111 1
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`126’2014
`
`Patent Review Processing System (PRPS)
`6. Effective January 14, 2013 (effective date of the AIA Technical Conections Act), a petitioner may file an interperfes review
`petition challenging a first-to-invent patent or reissue patent upon issuance including during the first nine months after issuance.
`
`7. Should you encounter issues with using a particular deposit account in PRPS, ptease close out of the browser completely.
`clear the cookies in your browser, login to PRPS again. and input the correct deposit account number.
`If you are stitl unable to
`use the deposit account, please call the Board at (571) 272-7822.
`
`8. PRPS will be undergomg an upgrade on February 15. 2014. Please see the FAQs below for more information following the
`upgrade.
`Please note updated FAQs A9, BB, F8, F9, and 613 below.
`
`Frequently Asked Questions (FAQs)
`.8 stemAv i
`ii
`n
`n r
`ation
`B. Searching and Reviewing Qgcumgnts
`0. Registering as a PRPS User
`D. Filing a Petition
`E. M
`F. §ubmission of Patent OwnerfRespondent information and Preliminary Reeraznee
`G. Filing Other Muments
`H. :lginggr and gonsolidation
`I. Derivation Proceedings
`
`A. System Availability and General Information
`A1 H
`to PRPS?
`
`Go to the Patent Trial and Appeal Board (PTAB) Web page at; httg:lfwww.g§ptg govfigfboardsfbpgrringgx '§p_
`tlwebfgot408170259§37fhmrffvmnrvusgtogovriplboardsfbpatfrndexispg . and then click on “Direct Link“ under ”Patent Review
`Processing System (PRPS)".
`
`Once you are registered, close out of the browser completely. and then bring the browser back up and go to
`hops/{mammalsusptogov (Men/2014081rogseormnpsrrgraotrialsosgrogovg. You will receive an email containing the verification
`code.
`
`On the PRPS welcoming screen. click on Login and enter your User ID and password. When the screen asks fo;r the verification
`code. copy and paste the verification code from the email.
`
`A2. If PRPS is
`via emai gr mat ?
`
`d rin n rm
`
`i
`
`hours or other unscheduled out
`
`n
`
`ma I file a
`
`tition or
`
`th r
`
`If you have any difficulties with PRPS, please call the Board at (571) 272-7822.
`
`However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be submitted to the Board
`via email: Tnals@uspto.gov [mailto;TriaIs@usgto.gov) .
`Petitions submitted via email must include:
`
`-
`
`.
`
`-
`
`-
`
`-
`
`-
`
`name of point of contact;
`
`email address of point of contact;
`
`patent number to which the petition corresponds to: application number in the case of a derivation proceeding);
`
`application number of the patent;
`
`petitioner’s application number (in the case of a derivation proceeding);
`
`number of claims challenged;
`
`type of trial proceeding;
`
`power of attorney; and
`
`fee. e.g.. a deposit account authorization.
`
`(1) be accompanied by a motion requesting
`In addition. a petition or document submitted via email or other means must:
`acceptance of the submission, and {2) identify a date of transmission where a party seeks a filing date other than the date of
`receipt at the Board. 37 C.F.R. § 42.6(b).
`It is important to note that a petition witl not be accorded a filing date unless it is
`accompanied by a payment of the appropriate fees (eg, a deposit account authorization).
`
`Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®J is authorized only if both
`PRPS and the Board’s email address
`rials
`u
`to.
`v mailtozTrials
`us to. by
`are unavaitable. The mailing address is:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`PO Box 1450
`
`Alexandria, Vitginia 22313-1450
`
`https:flweb.archive.orglweb120140817025907ll'rtlp:lwww.uspto.govfiplboardsfbpailprps.jsp
`
`2/11
`
`

`

`121612014
`
`Patent Review Processing System (PR PS)
`For hand delivery or delivery via FEDEX, UPS. etc.:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`
`Madison Building (East)
`
`600 Dulany Street
`
`Alexandria, Virginia 22313
`
`Ag. \Mll extensigns gf t'me be available?
`
`If PRPS is down during normal business hours, a party may contact the Board and request a one-day extension of time for due
`dates that are set by mic or orders of the Board. 37 C.F.R. § 42.5.
`In the unlikely event that an administrative patent judge is
`not available to rule on the extension, the Board may grant an extension the day after the paper is due. However, no extensions
`of time will be granted for any statutory time period.
`
`A4. What is the megabyte limit fora document iggioad'?
`
`A singte uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to accept files over 25
`megabytes at this time. USPTO expects to be able to increase the limit in future releases.
`
`If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.
`Users are encouraged to reduce the file size by:
`
`1. splitting a large file into multiple smaller files; andfor
`2. converting MS Vibrd® documents into PDF files, rather than printing documents and scanning them in as PDF files.
`A5
`the
`a imitt
`thenumber
`f
`ents that
`n
`u loaded
`rfilin ?
`
`No.
`
`A6. Are there any naming conventiene for gocgmente or character getg'ctions'? (revieeg —- Men 20 2014)
`
`There are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to
`provide a name that will appear in the docket listing. This name should be simple and descriptive, such as “Jones Motion to
`Amend" or “Second Declaration of Dr. Smith.“ Document names must be less than 255 characters.
`
`A7. \Mll tne Office provide fggns leg, power 9f attorney or lPR trensmittal) for filing documente in a grocee_dirig'?
`
`PRPS provides screens forthe parties to enter certain information (eg, lead and back-up counsel and real party in interest).
`However, the Office does not have forms beyond those PRPS fillable screens. While forms may become available with future
`releases, most filings will be part of motion practice rather than pre-defined forms.
`A8. How can
`h
`etherl filed a
`ument
`ro
`‘7
`
`After you upload a document in the proper format (I.e.. PDF or MPEG for exhibits and PDF for all other documents) and click
`“Submit,” you will receive an acknowledgement on the screen in PRPS and a filing receipt via email if the document is filed
`property.
`if you did not receive an acknowledgement on the screen or a filing receipt via email, the document most likely has not
`been uploaded properly and you should contact the Board at (571) 272-7822. You may also check whetherthe document is listed
`in the file contents of the proceeding.
`
`A9. If the wrong document i§ eubmitted can it E fleleted through the PRPS interfege? (revised - FQDEJQD! 14 2014)
`
`Yes, as long as the document has not yet been submitted. When uploading a document. users should ensure that the correct file
`has been selected before clicking the “Upload File" button.
`If the wrong document is uploaded but the “Submit" button has not yet
`been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are
`uploaded, the user must click the "Submit" button to complete the submission. Documents uploaded, but not yet submitted.
`have not been filed with the Board.
`
`If the wrong document was uploaded and the “Submit” button was clicked. you should file the correct document and a motion to
`expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will
`generally be granted.
`
`A10.
`
`n
`
`r hanone
`
`it
`
`fit
`
`acaseatthe metime?
`
`Yes, more than one person may review documents or upload documents in a proceeding at the same time, even if they are
`sharing a user in.
`
`II the PAIR re
`11
`gm
`
`for the chall n
`
`tshow wheth r
`
`'t‘on has been fil
`
`ora deci
`
`i n
`
`the
`
`tition n
`
`can
`
`Yes, for example, PAiR will have entries for the following:
`
`Petition Requesting Trial
`
`Request for Trial Granted
`
`Request for Trial Granted in Part
`
`Request for Trial Denied
`
`Request for Trial Dismissed
`
`hitps u’Mebarchiveorg/web/E’Ot 40817025907Ihttpszww.uspto.govfiplboardsfbpailprpsjsp
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`

`12/612014
`
`Patent Review Processing System (PRPS)
`Trial Termination or Final Written Decision
`
`Trial Review Certificate Issued
`
`A1 .
`
`l
`
`t
`
`r
`
`Iication ro rammin interf
`
`APl
`
`t
`
`S?
`
`No, API access to PRPS is not permitted at this time.
`
`A13. Can I downtoad information in bglk fmm PBES?
`
`PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is not intended to be a
`source for bulk downloads of USPTO data.
`Individuals, companies. IP addresses, or blocks of IP addresses who, in effect, deny
`semice to the general public by generating unusually high numbers of daily PRPS accesses (cg, searches, pages, document
`retrievals), whether generated manually or in an automated fashion, may be denied access to PRPS without notice.
`
`A14. How do | enter a foreign agdress in PRPS?
`
`Certain screens in PRPS allow for the entering of address information (e.g,, for a petitioner or patent ownerirespondent’s real
`party in interest}.
`In the case of a foreign address, users should select the appropriate country in the “Country" field, select the
`blank
`entry in the “State“ field, and then input the next three lines of the foreign address in the "Address Line 1," "City," and
`“Postal Code" fields.
`
`A15.
`
`If I am idle in PRPS er |§§§ than §Q minutes what will hapgen? ngy 11 2014]
`
`Nothing as long as you are active—{key strokes, clicks. etc.)—, you can continue to work as you normally do.
`A16.
`If
`idle in PRPS for 30 minut
`rm r will ose an of the com Ieted u I
`ds
`ractivities from th tim
`ion ifl
`Ii k
`t esave button? Jul
`11 2014
`
`t
`
`If you enter some data fields, then either click on the submit button or the save button to complete the activities, all changes
`No.
`will be saved into the PRPS system, and will not be lost from the session time-out. All documents are saved when you click on
`the upload button. so all uploaded documents will not be lost when you are timed out.
`
`if I am idle in PRPS for 30 minutes gr mgre will I lose any of the data enterg frgm the timed-cut sesgign if I did not click
`A17.
`on the save button? {July 11 2014)
`
`You will lose any data entered on the last screen in which you were active before becoming idle. For example, if you were on the
`counsel page and were entering data for the backup counsel but did not finish and your system was idle for 30 minutes or more.
`the data entered on that page would be lost.
`
`A18. What will happen ifl am idle for; 30 minutes how do I get back into my sessigg? (July 11 2014}
`
`You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from
`‘My Docket’ and locate the hyperlink under ‘My Pending Tasks’ to continue working on the case. Once you have uploaded all
`your documents, then you can submit them.
`
`A19. What hapiEns if I upload a dggument ggt do not click the "Submit" buttgn? {new—August 12 20141
`
`Users must click the “Submit” button to complete a submission. Documents uploaded, but not yet submitted, have not been filed
`with the Board and will be deleted automatically after 30 days.
`
`B. Searching and Reviewing Documents
`B1
`n
`PRP t
`fora rooeedtn withoutr
`
`i t tin ?
`
`Yes, a non-registered user may search for a proceeding and review documents related to a proceeding. However, if you want to
`file a document or submit a fee payment in a proceeding. you must be a registered PRPS user.
`32
`n
`o a
`roceedin b the
`tent owner’?
`
`No, you may search for a proceeding by the petitioners name, petition type, patent number, or application number (for derivation
`proceedings).
`B3.
`\MIPRP
`
`rt
`
`t
`
`i
`
`'cs on the roceedin 3‘?
`
`t
`
`n
`
`Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the proceedings based on a
`particulartrial type, party name, petition filing date, institution date, patent number, and application number (for derivation
`proceedings).
`4.
`th re
`
`ntrial
`
`roc
`
`din rrum
`
`?
`
`sbe
`
`A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition for instituting a
`trial proceeding via PRPS has been successfully completed.
`If the process of filing a petition is not yet completed or was never
`completed, a trial number will be provided but it will not be listed in the search results.
`
`35. Wh hav th
`
`refix
`
`oftrél
`
`in numbers chan ad from "2012"to “2013" e.
`
`.
`
`IPR2012t
`
`IP
`
`013?
`
`The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus, any petitions
`filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with a prefix of "2013" (est,
`|PR2013 or CBM2013).
`BS.Wh
`r
`th
`
`rn rn
`
`rs in some roceedin s? revised—Febma
`
`14 2014
`
`t
`
`n
`
`In some previous versions of PRPS. PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper immediately when the
`paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submitting, the assigned numberwas not
`
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`

`1216/2014
`
`Patent Review Processing System (PR PS)
`
`In the current version of PRPS, papers are assigned a
`reassigned, causing a gap in the numbering of papers in that proceeding.
`number only when the submission process is completed. so there are no gaps in paper numbers.
`
`C. Registering as a PRPS User
`
`Q1. \M‘ro can Epiptgr’?
`
`Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who is not registered to
`practice before the Office under 37 C.F.R. § 11.6.
`
`92, What informatipn i§ Epired to register?
`
`When you are registering to use PRPS, you have to select a unique user ID and password. and enter your name and an email
`address.
`If you are a USPTO registered practitioner, you should enter your registration number.
`
`CS. Can I shag my user ID with my paralegals or other attpmeys in my ogganizatipn?
`
`It is important to keep in mind. however. that PRPS docket display
`Yes, a single user ID may be shared among a working group.
`is based on the user ID. Therefore. the registered user must ensure that sharing his or her user ID would not violate any
`protective order.
`
`D. Filing a Petition
`
`D1. When will my petition be accordpg _a_ filing gate?
`
`Once the Office reviews the petition and determines whether the petition is complete and the appropriate fees have been paid.
`the Office will send a notice to the petitioner and patent ownerrrespondent. The submission date of the compliant petition will be
`accorded as the filing date.
`
`If the petition complies with all of the statutory requirements {see 35 U.S.C. 135, 312. and 322). the original submission date of
`the petition will be accorded as the filing date. Conversely, no filing date will be accorded if a statutory requirement is not
`satisfied. For example. for fee deficiencies, the Office will accord the later submission date when all appropriate fees have been
`paid because the fees are required by statute. See. e.g.. 35 U.S.C. 312(c)(1).
`
`In the situation where a petition complies with all of the statutory requirements but contains only regulatory defects, the Office will
`accord the filing date of the original submission and notify the petitioner of the defects. The regulatory defects must then be
`corrected within the time period set forth in the notice.
`
`D2. Will the Office tpn'ninatp tpg proceeding if I filfl a ppmpjete petition that pontains regulatory gpffits and failed to gpflct the
`f
`t
`‘thinthetim
`ri
`set forthinthe noti
`'?
`
`Once the time period for correcting regulatory defects has expired. the petition will be fonrvarded to a Boardjudge who may initiate
`a conference call andfor issue an Order to show cause.
`If the petitioner farts to respond to such an Order appropriately. the
`proceeding may be terminated.
`It is important to note that the petitioner will not be entitled to a refund of any fees paid because
`the petition was in compliance with the statutory requirements for a filing date. For petitions filed on or after March 19. 2013.
`however. the petitioner may file a request for a refund of any post-institution fee paid. See FAQ E7.
`D3. H wilth
`rd review tition f r
`t
`o
`and re ulato
`c m tiance? revis
`~M h28 2014
`
`Once a petition is submitted via PRPS. a Board paralegal will review the petition for statutory and regulatory compliance.
`
`First, there are certain statutory requirements in 35 U.S.C. 135(3). 312(a). and 322(a) that must be met for a petition to be
`accorded a filing date. The following is a list of the “top 5" things the paralegal will be looking for in IPFt. PGR, and cam
`petitions:
`
`- Appropriate fee successfully paid.
`Identification of the patent and the specific claimts) being challenged.
`Identification of the real party in interest.
`. Copies of the patents and printed publications relied upon in the petition. and
`Evidence {e.g., certificate of service) that a copy of the petition was provided to the patent owner.
`
`The following are the "top 4" things the paralegal will be looking for in DER petitions:
`
`- Appropriate fee successfully paid.
`-
`Identification of the petitioner's pending application,
`-
`Identification of the respondent's eariier filed patent or application. and
`- Evidence, (e.g.. certificate of service) that a copy of the petition was provided to the respondent.
`
`If any statutory requirement is not met, the petition is incomplete.
`
`- The paralegal may call the individual who filed the petition and explain the deficiency.
`- The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by
`email.
`- The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission.
`-
`If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the petttioner
`challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees — the petitioner
`will receive notification and can file a request to have the Board review just the first 20 chalienged claims (15 beginning
`March 19, 2013).
`
`Second. there are certain reguiatory requirements in part 42 of 37 C.F.R. that must be met (6.9.. page limits, font size. signature.
`identification of lead and back-up counsel).
`
`httpsu’r‘web.archive.orngeb/20140817025907fhttp2hrvww.uspto.govfipfboardsfbpailprps.jsp
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`5l11
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`

`12162014
`
`Patent Review Processing System (PRPS)
`If any regulatory requirement is not met, the petition is defective.
`
`- The paralegal may call the individual who filed the petition and explain the defect.
`- The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition will receive
`notification by email.
`- While the petition will be accorded the filing date of the ORIGINAL submission. the defect must be corrected within one
`week.
`[f the defect is not corrected within one week. the petition will be forwarded to a Board judge who may initiate a conference
`call andior issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.
`
`-
`
`If there are no statutory or :egulatory errors with the petition. the paralegal will enter a Notice of Filing Date Accorded to Petition,
`the petitioner will receive notification by email. and the patent owner/respondent will receive a copy via regular mail.
`
`D4. If the corresppnglenpe ggdxess of record for the subject patent pr gppjiggtion is not up to date pan the petitioner senre tm
`petition on the patent owngripegppngpnt at a d'fferent address?
`
`Yes, the petition and supporting evidence must be served on the patent owner/frespondent at the correspondence address of
`record for the subject matter. The petitioner may additionally serve the petition and supporting evidence on the patent
`ownerires pendent at any other address known to the petitioner as likely to effect service. See §§ 42.105(a). 42.205(a), and
`42.406(a).
`
`DE. Afterl file a Etition how do I file a fgilfl—up document [p.g. g mgtign to expunge)?
`
`You must use the lead counsel’s user ID to submit any document in the proceeding. even when you used a different user ID to
`file the petition. To upload the document, see FAQ G1.
`
`De.
`
`If a gatition is incomplete how muph time pp I get to complete it?
`
`The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37
`C.F.R. §§ 42.106lb). 42.206lb). and 42.4mm), and FAQ D3.
`
`D7. Can I pregpnt glgim ghgfig and arguments in landscape orientatipn"
`
`No. All documents. otherthan drawings. must be written in portrait orientation including claim chads and arguments. The Board
`previously accepted a few petitions with claim charts written in landscape orientation because the procedure for filing AIA
`petitions is new.
`
`Switching from portrait orientation to landscape orientation within a document (e. g., a petition) creates inefficiency for the
`reviewing officials at the Board. Therefore, correction is now required when a document or portions thereof (e.g., claim charts)
`are written in landscape orientation. This is consistent with the policy set forth in § 42.103) and the practice set forth in § 1.52(a)
`(1)(iii) for filing papers that are to become a part of the permanent record in the application or patent files within the USPTO.
`D8.
`n
`etitionerfilemandato
`r1
`ti
`in
`e
`tedocument‘?
`
`No. The petitioner’s mandatory notices must be filed as part of the petition itself. See §§ 42.8{a)(1}. 42.104. 42.204, 42.304, and
`42.405. The Board previously accepted a few improper mandatory notices because the procedure for filing AIA petitions is new.
`However. correction is now required when a petitioner’s mandatory notices are not filed as part of the petition.
`D9.
`fl mfilin tw
`tttions challen tn the am
`tnt
`h
`use the same exhibitn m
`in both ca
`
`?
`
`In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner should number its
`No.
`exhibits uniquety for both cases. such as 1001-1099 for case #1 and 1101-1199 for case #2. See § 42.63(c). Similarly. the
`patent owner in such situation should number its exhibits uniquely for both cases. such as 2001-2099 for case #1 and 2101-2199
`for case #2. Therefore. if the Board decides to consolidate the cases, the exhibits would continue to be uniquely numbered in the
`consolidated proceeding.
`0‘
`l
`
`mm n
`
`f und in
`
`fit
`
`7
`
`'
`
`—
`
`ru
`
`11 2014
`
`The following are the top 10 common shots:
`
`1. Improper usage of claim charts by including arguments. claim construction, andlor legal analysis in a claim chart (see FAQ
`1312);
`
`2. Failure to set forth claim construction of disputed or important claim terms expressty in a claim construction section;
`
`3. Exhibits do not match the documents listed in the Exhibit List;
`
`4. Failure to identify related matters or provide a statement that there are no related matters;
`
`5. Exhibits are not sequentially numbered in the 1001-1999 range;
`
`6. Failure to identify iead or back-up counsel as required by §§ 42.8 and 42.10;
`
`7. Margins less than 1 inch as required by § 42.06:
`
`3. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104{a) or §
`42.204(a):
`
`9. The petition and supporting documents are sewed on the patent owner at an address that is not the correspondence address
`of record for the subject patent as required by § 42.105(a) or '9‘ 42.205(a}; and
`
`10. The petition and supporting documents are served on the patent owner laterthan the filing of the petition.
`11
`l is a etition seekin an inter artes review f
`t nt
`t nt?
`
`Yes. 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a patent may file with
`the Office a petition to institute an interpen‘es review of the patent." This provision is not limited to utility patents.
`
`https:lMeb.arche.orgMebl201 40817025907mttp:iwww.uspto.govliplboardslbpailprps.jsp
`
`6H1
`
`

`

`1216/2014
`
`Can claim chart
`— Febru
`11
`014
`
`in |
`
`e |
`
`Patent Review Processing System (PRPS)
`im constnicti n
`t
`and ex lanation
`t
`h
`the claims
`
`n atentable?
`
`vi
`
`No. Extensive usage of claim charts in a petition is discouraged.
`
`The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable
`under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require
`double spacing. Additionally. the mles require that the petition specify where each element of a challenged claim is to be found
`in the prior art. The element by element showing may be provided in a claim chart, which is permitted to be written with single
`spacing. See § 42.6(a)(2)(iii). Placing one's argument and claim construction in a claim chart to circumvent the double spacing
`requirement is not permitted, and any such argument or claim construction may not be considered by the Board.
`
`The Board previously accepted a few petitions with claim charts that included claim constructions, arguments, and explanations
`as to how the claim is unpatentable because the procedure for filing AIA petitions was new. However, correction is now required
`when a petition includes improper usage of claim charts.
`
`Q13. What is the pgfegd format for glaim ghar‘tg?
`
`Claim charts should be presented in a readable format so that a reader (e.g., the patent owner are deciding official) is able to
`locate the disputed claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art
`teachings in a single column format andfor without appropriate spacing creates inefficiency and, at times, appears to circumvent
`the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (9.9., claim limitations
`in the left column and prior art teachings in the right column), and each claim should be presented in a separate chart.
`14 How dolsu mit
`itionaldocum nt
`l
`'tha
`tition?
`
`Various screens are provided in PRPS for submitting a petition, including "Party Information,” “Petition Documents,” "Payment,"
`“Counsel lnfon'nation,‘ "Related Matters,” and “Review Petition.” A petition and all exhibits to the petition should be uploaded
`using the “Petition Documents” screen. To submit a document accompanying the petition (e.g., a motion to seal), click on
`“Upload Document” at the top-left of the screen, enter the document information in the following screen, and click "Submit.” The
`"Upload Document" function, however, should not be used for the petition itself and any exhibits to the petition.
`D15.
`h
`i
`' m
`tition oth r
`t
`iter
`rres
`vi
`st
`rant review
`r
`ered busins m th
`revi
`?
`28 2013
`
`at nt
`
`A. Yes, the petitioner should list other related review proceedings, as related matters, including those that are being filed
`concurrently or subsequently. This will promote administrative efficiency as the Board may assign the same panel to all related
`review proceedings.
`
`E. Fees
`
`E1.
`
`nl
`
`thefee inPRP
`
`' multileform of
`
`m
`
`‘5‘
`
`No, petitioners must pay the full amount in PRPS using one form of payment. Petitioners with a special need to use multiple
`forms of payment (e. g., deposit account and credit card) to pay the fees for a single lPR, PGR, or CBM petition should contact
`the Board at (571) 272-7322. Petitioners will be asked to provide written authorization to charge the requested forms of payment.
`Transfer will then occur as soon as practicable. The date when transfer is completed will be used for purposes of according a
`filing date to the petition. See FAQ D1.
`
`.Canl a th f
`
`in m ile credit ca
`
`fr
`
`etransaction?
`
`No, only one credit card may be used. Parties may not split payment over multiple credit cards. Further note that Treasury
`Department regulations limit a credit card payment to a $49,999.99 per day transaction.
`
`filed an lncom l
`3
`refund of the ffi?
`
`t
`
`titi n
`
`itha a ment of th a
`
`rd nate fees n
`
`'
`
`not to correct in
`
`t't'on can!
`
`is
`
`Yes, a petitioner may file a request for a refun