The Patent Trial and Appeal Board (PTAB) denied a patent owner’s request to file a motion for sanctions under 37 C.F.R. §§ 42.12(a)(2) and 42.12(a)(7). These rules authorize the PTAB to impose sanctions when a party (1) advances misleading or frivolous arguments, or (2) improperly uses the proceeding to harass, cause unnecessary delay or increase cost.
At the telephonic conference to hear the request, the parties disputed whether the petitioner had reused arguments from an earlier inter partes review (IPR) petition against the same parties on the same patent. The PTAB ultimately decided that the arguments in the two IPR petitions were different. “Some overlap between [the two petitions] does not demonstrate cause to authorize a motion requesting sanctions.” Despite this rejection, the board noted that it would consider the patent owner’s arguments in deciding whether to institute the IPR.
On a procedural note, remember, most motions in an IPR must be authorized by the PTAB before they are filed. 35 C.F.R. § 42.20(b). In Chums, the board disregarded, in its entirety, the patent owner’s draft motion for sanctions, which was attached to an email requesting permission to file the sanctions motion, because it violated 35 C.F.R. § 42.20(b).
Chums, Inc. v. Cablz, Inc., IPR2015-00602, Paper No. 9 (PTAB Jun. 16, 2015).