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In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00415, Pape 51, IPR2013-00416, Paper 35, IPR2013-00417, Paper 62 (August 7, 2014), the patent owner submitted a notice of withdrawal of motion to amend “without prejudice” to pursue the same claims in another application or proceeding.  The Board explained that the paper was more than merely a notice of withdrawal of its Motion to Amend, because it specified the desired effect or consequence of the withdrawal. The Board treated the Notice as a motion, which pursuant to 37 C.F.R. § 42.20(b), cannot be filed without prior authorization from the Board, and ordered it expunged.

In Iron Dome LLC v. Chinook Licensing DE, LLC., IPR2014-00674, Paper 7 (August 7, 2014), the Board treated the patent owners request for an award of its attorney’s fees associated with the proceeding, as “sanctions pursuant to 37 C.F.R. § 42.12? as an unauthorized motion, and required the patent owner to file a new response.

These are timely reminders that the Board should be consulted before any filing (even one attempting with withdraw a prior filing).

Topics:  Patent Litigation, Patent Trial and Appeal Board, Patents, Toyota

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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