`Entered: October 18, 2013
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`U.S. BANCORP
`Petitioner,
`
`v.
`
`RETIREMENT CAPITAL ACCESS MANAGEMENT COMPANY
`Patent Owner.
`_______________
`
`Case CBM2013-00014
`Patent 6,625,582
`_______________
`
`
`
`Before GLENN J. PERRY, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`
`WARD, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Case CBM2013-00014
`Patent 6,625,582
`
`
`An initial conference call was held on October 11, 2013 and attended by the
`
`above-identified panel members and respective counsel for the parties. The
`
`following matters were discussed.
`
`
`
`Co-pending Litigation
`
`The parties confirmed that the co-pending litigation between the parties,
`
`Benefit Funding Systems LLC v. U.S. Bancorp, Case No. 1:12-cv-803-LPS
`
`(D. Del.), is currently proceeding forward.
`
`
`
`Scheduling Order
`
`Petitioner’s List of Proposed Motions (Paper 14) states that Petitioner may
`
`request authorization to file a motion for an expedited schedule. Petitioner
`
`indicated that it would prefer to expedite the schedule. Patent Owner’s List of
`
`Proposed Motions (Paper 17) states that Patent Owner may request authorization
`
`for a motion to amend the scheduling order. Patent Owner stated that Patent
`
`Owner would prefer to extend the schedule. We requested counsel to confer
`
`regarding their respective issues with the schedule. We reminded counsel that they
`
`can agree to alter Due Dates 1-3 of the Scheduling Order (Paper 13) without
`
`authorization from the Board. We instructed counsel to request a conference with
`
`the Board if they are unable to reach an agreement as to the schedule.
`
`
`
`Protective Order
`
`Patent Owner filed a Motion to File Documents Under Seal (“Motion to
`
`Seal,” Paper 11) along with its Preliminary Response, seeking to seal certain non-
`
`publicly available materials. Additionally, Patent Owner filed a proposed
`
`Protective Order (Ex. 2013) along with the Motion to Seal. During the conference,
`
` 2
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`
`
`
`
`
`
`Case CBM2013-00014
`Patent 6,625,582
`
`Patent Owner indicated that it had not conferred with Petitioner concerning the
`
`motion since filing the supposedly confidential materials and Patent Owner’s
`
`Preliminary Response relying on the supposedly confidential materials. The Board
`
`instructed Patent Owner to confer with Petitioner to discuss ways to avoid the use
`
`of materials that must be placed under seal. The motion is therefore dismissed
`
`without prejudice to refilling if the parties cannot reach an agreement.
`
`
`
`Other Motions
`
`Petitioner states in its List of Proposed Motions that it may seek
`
`authorization for a motion to submit supplemental information pursuant to 37
`
`C.F.R. §42.223. During the conference, counsel for Petitioner indicated that it
`
`seeks to file supplemental information regarding a potentially precedential decision
`
`published after the filing of the Petition regarding patent eligibility under 35 U.S.C.
`
`§101. We informed Petitioner that no such submission is necessary as the Board is
`
`aware of the recent § 101 precedents and Petitioner will have the opportunity to
`
`address any relevant precedent in Petitioner’s reply.
`
` Patent Owner’s List of Proposed Motions indicates that it may seek
`
`authorization for a motion under 37 C.F.R. §42.51(b)(2) for additional discovery.
`
`Patent Owner indicated that it may seek additional discovery regarding the
`
`relationship of the Petitioner to US Bancorp Licensing and certain patent
`
`prosecution activities by U.S. Bancorp Licensing. Because the parties had not
`
`discussed this issue prior to the call, we urged the parties to discuss the issue and
`
`attempt to reach agreement before involving the Board.
`
`Patent Owner indicated that it may file a motion to amend. If Patent Owner
`
`seeks to file a motion to amend, it first must confer with the Board. See 37 C.F.R.
`
`§ 42.121(a). Patent Owner is reminded that unlike a challenge to a patented claim,
`
` 3
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`
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`Case CBM2013-00014
`Patent 6,625,582
`
`where the burden is on the petitioner to demonstrate unpatentability, with a motion
`
`to amend, the burden is on the patent owner to demonstrate patentability. We direct
`
`the parties to the discussion in Idle Free Systems, Inc. v. Bergstrom, Inc. of the
`
`requirements for a motion to amend claims. See Decision—Motion to Amend
`
`Claims, IPR2012-00027, Paper 26.
`
`
`
`Accordingly, it is hereby
`
`ORDER
`
`ORDERED that Patent Owner’s Motion to Seal is dismissed; and
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`FURTHER ORDERED that no motions are authorized other than those
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`already authorized by rule or in the Scheduling Order.
`
` 4
`
`
`
`
`For PETITIONER:
`
`Anthony Son
`Brian Pandya
`Ryan Corbett
`WILEY REIN LLP
`ason@wileyrein.com
`bpandya@wileyrein.com
`rcorbett@wileyrein.com
`
`
`
`For PATENT OWNER :
`
`Casey Griffith
`Shital Desai
`KLEMCHUK KUBASTA LLP
`casey.griffith@kk-llp.com
`sita.desai@kk-llp.com
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