The Board may “exclude the … evidence in their entirety, or alternatively, decline to consider the … related evidence.” CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 79, at 3 (PTAB Aug. 9, 2013).
Exhibit 2001 is the Corrected Petition for Inter Partes Review in IPR2014-00312, Square, Inc. v. REM Holdings 3, LLC (“Morley IPR”), and is dated January 23, 2014.
The Patent Owner Response (Paper 23) cites Exhibit 2001 for the unfounded proposition that Petitioner had previously argued in the Morley IPR proceeding that the ’459 Provisional (Exhibit 1005) provides written description support under 35 U.S.C. § 112 to entitle the ’566 patent claims the benefit of an early priority date.
3 In 2015, the Federal Circuit clarified when a granted patent is effective as prior art based on the filing date of its provisional application in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (a challenger must additionally identify written description support of at least some of the issued claims in the prior art patent by its provisional application, in accordance with 35
Respectfully submitted, /David M. Tennant/ David M. Tennant (Reg. No. 48,362) WHITE & CASE LLP 701 Thirteenth Street, NW Washington, DC 20005 Counsel for Petitioner