UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`Patent of FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00005
`Patent 6,675,151C1
`_______________
`
`PETITIONER CRS ADVANCED TECHNOLOGIES, INC.’s
`LIST OF PROPOSED MOTION
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`Patent of FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`_______________
`
`Case CBM2012-00005
`Patent 6,675,151C1
`_______________
`
`PETITIONER CRS ADVANCED TECHNOLOGIES, INC.’s
`LIST OF PROPOSED MOTION
`
`
`
`
`
`
`
`Case CBM2012-00005
`Patent 6,675,151C1
`Attorney Docket No.: 09461-0004
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Further to the Board’s Decision (Paper No. 17) instituting Covered Business
`
`Method Review of U.S. Patent 6,675,151C1 (“the ’151 patent), setting an Initial
`
`Conference Call for February 7, 2013, and directing the parties to pages 48765-66
`
`of the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Section (II)(E)), Pe-
`
`titioner CRS Advanced Technologies, Inc. (“CRS”) hereby submits a list of a pro-
`
`posed motion presently contemplated by CRS for which CRS intends to request
`
`authorization during the Initial Conference Call and the following comments on the
`
`Board’s proposed Scheduling Order (Paper No. 19):
`
` a Motion for an Expedited Schedule as approved by the Board.
`
`Having declined to grant CRS’s petition on the inadequate written descrip-
`
`tion ground, the sole issue remaining for review is invalidity of the asserted claims
`
`under 35 U.S.C. § 101. Patent-subject-matter eligibility under 35 U.S.C. § 101 is a
`
`pure issue of law. In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009). As such,
`
`CRS believes that the issue is ripe for determination, that an oral hearing is not
`
`necessary, and that the existing schedule should be expedited to achieve a prompt
`
`resolution of this issue. Moreover, CRS recently filed on January 29, 2013, a mo-
`
`
`
`1
`
`
`
`tion in the U.S. District Court for the Eastern District of Pennsylvania to stay the
`
`Case CBM2012-00005
`Patent 6,675,151C1
`Attorney Docket No.: 09461-0004
`
`
`parties’ litigation involving the ’151 patent pending the final outcome of this pro-
`
`ceeding. Accordingly, to the extent that a district court trial is not mooted by the
`
`outcome of this proceeding, CRS is committed to taking all necessary steps in this
`
`forum to insure that the duration of any such stay granted by the district court is as
`
`short as reasonably possible under the circumstances.
`
`It is difficult to conceive of facts that exist that are not already in the posses-
`
`sion of the Patent Owner which could possibly bear on the Board’s determination
`
`of the legal issue before it. Indeed, the Patent Owner took no particular discovery
`
`specifically on this issue during the discovery phase of the district court proceeding
`
`beyond requesting CRS to explain the legal basis of its invalidity theory in an in-
`
`terrogatory answer. Assuming arguendo, however, that the Patent Owner can es-
`
`tablish a legitimate need to engage in relevant discovery, CRS does not anticipate
`
`that any such discovery will be particularly extensive or time-consuming,1 and that
`
`the Due Dates could be significantly advanced without prejudicing the parties’
`
`ability to adequately brief the issue for the Board. Indeed, since the Patent Owner
`
`has already prepared and filed a lengthy sixty-page preliminary response in opposi-
`
`1 The parties also have already agreed among themselves that all discovery
`obtained in the district court litigation could be freely re-used in this proceeding
`provided that any confidential information designated as such under the protective
`order in the district court was maintained as confidential in this proceeding.
`2
`
`
`
`
`
`tion to CRS’s petition, much of its work to prepare a post-institution response to
`
`Case CBM2012-00005
`Patent 6,675,151C1
`Attorney Docket No.: 09461-0004
`
`
`CRS’s petition is already done. CRS also does not contemplate any amendments
`
`to the claims, as the Patent Owner’s counsel are barred by the terms of the protec-
`
`tive order in the pending litigation from taking such action.
`
`If patent-subject-matter eligibility under 35 U.S.C. § 101 were a question of
`
`fact like anticipation, CRS would have sought leave to file a motion for summary
`
`determination.2 However, since patent-subject-matter eligibility is a question of
`
`law and the only issue under Board adjudication, CRS’s petition is, in effect, one
`
`seeking a summary determination of this issue. Nonetheless, CRS believes that a
`
`motion to expedite the proceedings would be appropriate under the circumstances.
`
`CRS’s request is not intended to circumvent any of the activities currently provid-
`
`ed for in the Board’s Scheduling Order, but rather merely to have the Board adjust
`
`the dates set forth in that order to provide an expedited discovery and briefing
`
`schedule warranted by the limited legal issue before the Board for review. There is
`
`no reason why the parties require nearly seven months from the date of the Board’s
`
`Decision instituting Covered Business Method Review in order to make all neces-
`
`
`2 Nevertheless, if the Board deems that a motion for summary determination is
`appropriate in this case, CRS will consider filing a Motion for Summary
`Determination of Invalidity under 35 U.S.C. § 101, asserting that the challenged
`claims (claims 3, 6, 7, 16, 24, and 33) of the ’151 patent are unpatentable because
`they are directed to nonstatutory subject matter.
`3
`
`
`
`
`
`sary submissions to the Board and to prepare for oral argument (assuming arguen-
`
`Case CBM2012-00005
`Patent 6,675,151C1
`Attorney Docket No.: 09461-0004
`
`
`do the Board should ultimately conclude that oral argument is necessary in this
`
`case).
`
`Accordingly, CRS proposes that the Board’s January 23, 2013, Scheduling
`
`Order be modified as indicated in the second column of Attachment A. In the
`
`event that the Board does not wish to expedite the Patent Owner’s Due Date 1,
`
`CRS is nonetheless willing to commit to preparing and filing an early reply to the
`
`Patent Owner’s response (Due Date 2) by April 19, 2012, thereby unilaterally
`
`shaving roughly one month off of the current schedule. Accordingly, CRS re-
`
`quests that, at a minimum, the Board readjust all subsequent dates in light of this
`
`concession, as indicated in the third column of Attachment A.
`
`
`
`At the present point in time, CRS does not contemplate filing any additional,
`
`non-routine motions which would materially impact upon the final schedule or-
`
`dered in this proceeding. In all likelihood, CRS’s need to file motions to engage in
`
`discovery, to file supplemental information, to exclude evidence, to file observa-
`
`tions on cross-examination, etc., will depend upon the nature of Patent Owner’s
`
`submissions in this proceeding. CRS believes that such motions, should they
`
`prove necessary, can be easily accommodated even under CRS’s proposed expe-
`
`
`
`4
`
`
`
`dited schedule. CRS nonetheless reserves the right to seek subsequent authoriza-
`
`Case CBM2012-00005
`Patent 6,675,151C1
`Attorney Docket No.: 09461-0004
`
`
`tion for motions consistent with the Board’s Rules.
`
`
`
`Dated: February 5, 2013
`
`Respectfully submitted,
`
`
`
`
`By: /s/ Aaron J. Capron
`E. Robert Yoches, Reg. No. 30,120
`Aaron J. Capron, Reg. No. 56,170
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Phone: (202) 408-4000
`Fax: (202) 408-4400
`
`Attorneys for Petitioner
`CRS Advanced Technologies, Inc.
`
`
`
`5
`
`
`
`
`
`
`
`DUE DATE 1
`Patent owner post-
`institution response
`to the petition;
`Patent owner post-
`institution motion to
`amend patent
`DUE DATE 2
`Petitioner reply to
`patent owner re-
`sponse;
`Petitioner opposition
`to patent owner
`amendment
`DUE DATE 3
`Patent owner reply to
`petitioner opposition
`DUE DATE 4
`Petitioner motion for
`observation regard-
`ing cross examina-
`tion of reply witness;
`Motion to exclude;
`Request for oral ar-
`gument
`DUE DATE 5
`Patent owner re-
`sponse to observa-
`tion;
`Opposition to motion
`to exclude
`
`
`
`ATTACHMENT A
`
`Current Due
`Dates
`
`Proposed Expe-
`dited Due Dates
`
`Proposed Adjusted
`Due Dates in view
`of CRS’ voluntary
`early Due Date 2 of
`April 19, 2013
`March 18, 2013 February 22, 2013 [March 18, 2013]
`
`May 20, 2013 March 20, 2013
`
`April 19, 2013
`
`June 18, 2013
`
`April 10, 2013
`
`May 17, 2013
`
`July 9, 2013
`
`April 26, 2013
`
`June 7, 2013
`
`July 23, 2013
`
`May 10, 2013
`
`June 21, 2013
`
`1
`
`
`
`Proposed Adjusted
`Due Dates in view
`of CRS’ voluntary
`early Due Date 2 of
`April 19, 2013
`June 28, 2013
`
`On or after July 17,
`2013 in light of the
`Board’s availability
`
`
`
`
`
`DUE DATE 6
`Reply to opposition
`to motion to exclude
`DUE DATE 7
`Oral argument (if re-
`quired by the Board)
`
`
`
`Current Due
`Dates
`
`Proposed Expe-
`dited Due Dates
`
`July 30, 2013
`
`May 17, 2013
`
`August 13, 2013 May 30, 2013
`
`
`
`2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of February, 2013, a true and correct
`
`copy of the foregoing PETITIONER CRS ADVANCED TECHNOLOGIES,
`
`INC.’s PRELIMINARY COMMENTS AND LIST OF PROPOSED MOTIONS
`
`were served via electronic mail upon the following counsel of record for Patent
`
`Owner Frontline Technologies, Inc.:
`
`John P. Donohue, Jr., Lead Counsel
`Woodcock Washburn, LLP
`Cira Centre – 12th Floor
`2929 Arch Street
`Philadelphia, PA 19103
`Phone: 215.568.3100
`Fax: 215.568.3439
`Email: donohue@woodcock.com
`
`John E. McGlynn, Back-up Counsel
`Woodcock Washburn, LLP
`Cira Centre – 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`Phone: 215.564.8382
`Fax: 215.568.3439
`Email: mcglynn@woodcock.com
`
`
`/s/ Jacob T. Mersing
`Jacob T. Mersing
`Legal Assistant
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`
`
`
`
`
`
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