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`
`Trials@uspto.gov
`Tel: 571-272-7822
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`
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` Paper 31
`
`
` Entered: February13, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`v.
`FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`____________________
`
`Case CBM2012-00005
`Patent 6,675,151
`___________________
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and JENNIFER
`S. BISK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On February 7, 2013, the following individuals participated in the
`initial conference call:1
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`
`
`
`Case CBM2012-00005
`Patent 6,675,151
`
`
`(1) Mr. Aaron Capron,2 counsel for CRS;
`(2) Mr. John Donohue and Mr. John McGlynn,3 counsel for Frontline;
`
`and
`
`(3) Sally Medley, Jennifer Bisk, and Thomas Giannetti,
`Administrative Patent Judges.
`
`Motions list
`In preparation for the initial call, the parties filed motions lists.
`(Papers 27 and 29). The purpose of the motions list is to provide the Board
`and an opposing party adequate notice to prepare for the initial call and the
`proceeding. See, e.g., 37 C.F.R. § 42.21(a) and Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012). A motions list,
`however, is not the opportunity for a party to submit the motion itself.
`Rather, the list should contain a short, concise statement generally relaying
`enough information for the Board and opposing counsel to understand the
`proposed motion.
`As explained during the call, both parties failed to comply with these
`requirements. For example, CRS seeks authorization to file a sole motion
`for an expedited schedule. (Paper 29). Instead of a short explanation, CRS
`provides facts, arguments, and a proposed schedule totaling nearly six pages.
`In essence, CRS’ motions list is the motion itself. Another example of an
`improper request is found in Frontline’s motions list. There, Frontline
`requests that the initial conference call be postponed. Again, such a request
`is in reality the motion itself and not a request to file a motion. In light of
`
`
`2 Mr. Darrel Karl, counsel for CRS in the related litigation was also present.
`Counsel for Frontline did not object to Mr. Karl’s attendance.
`3 Mr. R. Scott Tewes, counsel for Frontline in the related litigation was also
`present. Counsel for CRS did not object to Mr. Tewes’ attendance.
`
`2
`
`
`
`Case CBM2012-00005
`Patent 6,675,151
`
`counsel for both parties’ representation that they did not fully appreciate the
`substantive nature of “the motions list,” the Board determined not to dismiss
`either party’s list. However, any future motions list that is not in compliance
`with established procedures may result in dismissal or expungement, for
`example, of the list.
`
`The Proposed Motions
`Frontline requests that the Board establish a process and schedule for
`resolving the meaning of claim terms. (Paper 27 at 3). In essence, Frontline
`requests that the Board have a separate claim construction proceeding prior
`to any of the other scheduled events, e.g., before the due dates for filing a
`patent owner post-institution response to the petition or any motion to
`amend.
`As explained during the call, such a process is neither desired nor
`necessary. The Board, in its decision to institute the covered business
`method review, set forth a construction of certain claim terms. (Paper 17 at
`4-6). To the extent that Frontline disagrees with that construction, Frontline
`will have opportunity to explain, with evidence, why the claim construction
`adopted by the Board should not be followed and/or what construction
`should apply. That opportunity is available in the form of a patent owner
`post-institution response. Counsel for Frontline did not explain to the
`Board’s satisfaction why the ordinary course, e.g., addressing claim
`construction in its patent owner post-institution response, should not be
`followed in this proceeding. Accordingly, Frontline’s request for a claim
`construction proceeding prior to the other scheduled events was not
`authorized. As a result of the Board not authorizing such a claim
`construction proceeding, counsel for Frontline withdrew Frontline’s request
`
`3
`
`
`
`Case CBM2012-00005
`Patent 6,675,151
`
`for additional discovery listed on page 4 (items 1 and 2) of Frontline’s
`motions list.
`The Board suggested, and counsel agreed, to postpone a discussion of
`any proposed motion to amend that Frontline intends to file. A time and
`date for revisiting that issue is set per this order. Counsel for Frontline
`represented that Frontline requests to file no other motion.
`CRS requests authorization to file a motion to expedite times and
`Frontline requests to file a motion to extend times. The Board considered
`the merits of the arguments during the conference call.
`CRS requests that the Board expedite Due Dates 1-7. Frontline
`requests that the Board extend Due Dates 1-3. The sole issue for trial is
`whether six claims of the ’151 patent are unpatentable under 35 U.S.C.
`§ 101. In light of this, a compressed schedule of due dates was initially set.
`Based on the facts presented during the conference call, the Board was not
`persuaded to change the current, already-compressed schedule.
`Counsel for Frontline was reminded that Frontline has had ample
`notice of the challenges to the ’151 patent from the time the petition was
`filed nearly five months ago. The issues for trial have been streamlined and
`simplified even further. Counsel for Frontline did not present an adequate
`factual basis to support a good cause showing for extending the Scheduling
`Order Due Dates 1-3. 37 C.F.R. § 42.5(c)(2). Nor was the Board persuaded
`that all of the Due Dates 1-7 should be expedited as CRS requests. The
`schedule already has been compressed and thus, the panel has determined
`that in order to resolve this proceeding in a speedy, yet just manner, the
`current schedule strikes a proper balance between the competing interests of
`the parties. 37 C.F.R. § 42.1(b). The parties were reminded that they may
`
`4
`
`
`
`Case CBM2012-00005
`Patent 6,675,151
`
`stipulate different dates for Due Dates 1 through 3. The parties were
`encouraged to consider doing so. The Board explained that it would
`consider expediting Due Dates 4-7 if the parties agreed upon a schedule for
`Due Dates 1-3. For all of the above reasons,
`It is
`ORDERED that CRS’ request that the Board expedite Due Dates 1-7
`is DENIED;
`FURTHER ORDERED that Frontline’s request that the Board extend
`Due Dates 1-3 is DENIED;
`FURTHER ORDERED that a conference call is scheduled for
`1:00 PM ET on February 21, 2013 to discuss any motion to amend Frontline
`intends to file; and
`FURTHER ORDERED that the parties be prepared to discuss any
`proposed motion to amend the claims.
`
`
`PETITIONER:
`
`E. Robert Yoches
`Finnegan, Henderson, Farabow
` Garrett & Dunner, LLP
`bob.yoches@finnegan.com
`
`PATENT OWNER:
`
`John P. Donohue, Jr.
`John E. McGlynn
`Woodcock Washburn
`donohue@woodcock.com
`mcglynn@woodocock.com
`
`5
`
`
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