Metrics, Inc. v. Senju Pharmaceutical Co., Ltd.

In an order involving two related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or the Board) denied a patent owner’s request to dismiss the petition on the grounds that petitioner had substantive and procedural errors in its Mandatory Notices and ordered the parties to make reasonable efforts to meet and confer before involving the Board by way of conference calls.  Metrics, Inc. v. Senju Pharmaceutical Co., Ltd., Case Nos. IPR2014-01041 and -01043 (PTAB, Sept. 9, 2014) (Obermann, APJ).

In accordance with the Board Trial Rules and Practice Guide, the Board “encourages the use of  conference calls to raise and resolve issues in an expedited manner.”  The Rules, however, do not require the parties to meet and confer on issues before requesting a conference call.  Here, the patent owner requested a conference call and requested that the board deny the IPR petition because the petitioner’s Mandatory Notices had substantive and procedural errors warranting dismissal.  The Board denied the request, noting that dismissal was not warranted under the circumstances.

Going forward, the Board directed the parties to meet and confer to resolve disputes such as this before involving the Board.  Specifically, with respect to any newly requested conference calls, the Board instructed that any email requesting a call must “include a certification that the meet-and-confer has taken place, or a full statement explaining why a meet-and-confer has not taken place, or a full statement explaining why a meet-and-confer could not take place prior to involving the Board.”  The Board further explained that the email should “describe the nub of the dispute” with appropriate “facts and authority.”