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).