letgo....discovery problems aside...lol

RE...highlights of Purcells IPR rehearing request..

" the Board has no power or authority to waive any statutory requirement,' such as that set forth in 35 U.S.C. § 312(a)(5):"

"the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner."

" This is consonant with the USPTO's website pages for Patent Review Processing System (PRPS) under Section 1) entitled "Filing a Petition" of Frequently Asked Questions (FAQs), where the USFTO distinguishes between statutory requirements and regulatory requirements and states that the failure to comply with the former renders a petition incomplete and not to be accorded a filing date. "

"Also, if the service of the Petition did not satisfy the statute, then yet a third factor forming the basis of the Board's Order would disappear, and would further undermine the Board's rationale for waiving the service rule.

"Statutes recited in Tidle 35 of the United States Code are statutory requirements, "and thus, a Congressional limitation on the Board's jurisdiction", and where the statute itself "does not authorize the Board or the parties to waive the requirement", the Board may not waive the requirement. GTNX, Inc. P. Initra, Inc., CBM2014-00022, CBM2014-00073, CBM2014-00074, and CBM2014-00075, Paper Nos. 20, 20, 21, and 20, respectively at p. 4 (Dec. 10, 2014)."

"Indeed, "lain agency may not confer power upon itself. To permit an agency to expand its power in the face of a congressional limitation on its jurisdiction would be to grant to the agency power to override Congress." La. Pub. Sen. Com,n'n v. FCC, 476 U.S. 355, 374-75 (1986)."

"Id. The Board has no "discretion" to expand its power, and although it has power to waive the rule regarding service of a petition, it has no power to waive or ignore the statuto?y requirement of service of a petition."

"(emphasis added). Even if the Board were to waive the service rule, Rule 42.105(a), and thereby effectively make the rule disappear, the non-waivable statutory requirement of 35 U.S.C. § 312(a)(5) would still need to be satisfied. "

"See, e.g., GEA Process, supra., at p. 22 C'Tn order to receive a filing date, the petition must satisfy § 312(a) statutory requirements as of the filing date.") "

"Also, if the service of the Petition did not satisfy the statute, then yet a third factor forming the basis of the Board's Order would disappear, and would further undermine the Board's rationale for waiving the service rule. "

"Statutes recited in Title 35 of the United States Code are statutory requirements, "and thus, a Congressional limitation on the Board's jurisdiction", and where the statute itself "does not authorize the Board or the parties to waive the requirement", the Board may not waive the requirement. GTNX, Inc. P. Initra, Inc., CBM2014-00022, CBM2014-00073, CBM2014-00074, and CBM2014-00075, Paper Nos. 20, 20, 21, and 20, respectively at p. 4 (Dec. 10, 2014)."

"Indeed, "lain agency may not confer power upon itself. To permit an agency to expand its power in the face of a congressional limitation on its jurisdiction would be to grant to the agency power to override Congress." La. Pub. Sen. Com,n'n v. FCC, 476 U.S. 355, 374-75 (1986)."

"Id. The Board has no "discretion" to expand its power, and although it has power to waive the rule regarding service of a petition, it has no power to waive or ignore the statutory requirement of service of a petition."

rule = regulatory

"The Order errantly holds that the service of a courtesy copy of the petition on the Patent Owner's counsel of record in connection with patent infringement litigation involving the patent, Mr. Anton Handal, satisfied the statutory requirement."

"There is no dispute that Petitioner never direct/y provided Patent Owner with copies of the required documents. Likewise, Petitioner has not properly served "the designated representative of the Patent Owner." The Board apparently concedes that Thorpe, North & Western, the entity that Petitioner attempted to serve, is not "the" or even "a" designated representative of Patent Owner. The sole issue, then, is whether Patent Owner's litigation counsel may be deemed "the designated representative of Patent Owner" under § 312(a) (5).

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Now we wait to see how the PTAB weighs that material...Purcell was the authority managing e.Digital IP to be noticed in order to be statutorily proper...not Thorpe, North & Western or Handal.

doni