Paper 23
`Date: May 1, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TRULIA, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`
`____________
`
`Case CBM2013-000561
`Patent 7,970,674
`____________
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`
`1 Case CBM2014-00115 has been joined with this proceeding.
`
`
`
`
`Date: May 1, 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TRULIA, INC.
`Petitioner
`
`v.
`
`ZILLOW, INC.
`Patent Owner
`
`____________
`
`Case CBM2013-000561
`Patent 7,970,674
`____________
`
`
`Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL W. KIM,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`
`1 Case CBM2014-00115 has been joined with this proceeding.
`
`
`
`
`
`CBM2013-00056
`Patent 7,970,674
`
`
`
`Introduction
`
`
`
`
`
`In a telephone conference held on April 7, 2014, we informed counsel for
`
`each party that the grounds instituted for trial, based in any part on Foster (Patent
`
`7,130,810), Keyes (Patent 7,120,599), or Lamont (Patent 7,219,078), cannot be
`
`maintained because all three patents are prior art under 35 U.S.C. § 102(e) and thus
`
`do not meet the criteria for supporting a challenge under Section 18(a)(1)(C) of the
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011)
`
`(“AIA”). Paper 19. All three patents, however, have corresponding published
`
`applications which constitute prior art under 35 U.S.C. § 102(b). Id.
`
`
`
`We considered, but declined to substitute the published applications for the
`
`associated patents, in order to convert the non-maintainable grounds under
`
`35 U.S.C. § 102(e) and § 102(e)/103 to maintainable grounds under 35 U.S.C.
`
`§ 102(b) and § 102(b)/103. Paper 19. Instead, the parties agreed that Petitioner
`
`would file a new petition for covered business method patent review, including
`
`only the grounds based on the corresponding published applications, and a motion
`
`to join that new proceeding with this proceeding, and that Patent Owner would not
`
`oppose the joinder motion. Paper 21.
`
`
`
`On April 10, 2014, Petitioner filed the new petition and that new proceeding
`
`is CBM2014-00115. Also on April 10, 2014, Petitioner filed a motion for joinder
`
`in CBM2014-00115, to join that proceeding with CBM2013-00056. That motion
`
`is unopposed by Patent Owner. We have instituted trial in CBM2014-00115 and
`
`granted Petitioner’s motion for joinder, in a concurrent paper.
`
`Discussion
`
`
`
`By this communication, we summarize and make clear what grounds of
`
`unpatentability are pending in this joined proceeding of CBM2013-00056 and
`
`CBM2014-00115, and address issues with papers, exhibits, and the schedule.
`
`2
`
`
`
`
`CBM2013-00056
`Patent 7,970,674
`
`A. Grounds Withdrawn
`
`
`
`
`
`
`
`The institution of trial on the basis of the following grounds are vacated and
`
`they are considered withdrawn and no longer pending in this joined proceeding:
`
`
`
`(1) claims 2, 5, 15-18, and 40 under 35 U.S.C. § 102(e) as
`
`anticipated by Foster (Patent 7,130,810);
`
`
`
`(2) claims 19-24 under 35 U.S.C. § 103 as unpatentable over
`
`Foster (Patent 7,130,810), Keyes (Patent 7,120,599), and Charles A.
`
`Calhoun, Property Valuation Methods and Data in the United States,
`
`Housing Finance International Journal 16.2 (2001)(“Calhoun”);
`
`
`
`(3) claims 2, 5, and 15-18 under 35 U.S.C. § 102(e) as
`
`anticipated by Lamont (Patent 7,219,078); and
`
`
`
`(4) claims 19 and 21-24 under 35 U.S.C. § 103 as unpatentable
`
`over Lamont (Patent 7,219,078), Foster (Patent 7,130,810), Keyes
`
`(Patent 7,120,599), and Calhoun.
`
`B. Grounds Added
`
`
`
`The following grounds on the basis of which trial is instituted in CBM2014-
`
`00115 are included in this joined proceeding:
`
`
`
`(1) claims 2, 5, 15-18, and 40 under 35 U.S.C. § 102(b) as
`
`anticipated by Foster (U.S. Application Publication 2004/0073508);
`
`
`
`(2) claims 19-24 under 35 U.S.C. § 103 as unpatentable over
`
`Foster (U.S. Application Publication 2004/0073508), Keyes (U.S.
`
`Application Publication 2001/0044766), and Charles A. Calhoun,
`
`Property Valuation Methods and Data in the United States, Housing
`
`Finance International Journal 16.2 (2001)(“Calhoun”);
`
`3
`
`
`
`
`CBM2013-00056
`Patent 7,970,674
`
`
`
`(3) claims 2, 5, and 15-18 under 35 U.S.C. § 102(b) as
`
`
`
`
`
`anticipated by Lamont (U.S. Application Publication 2003/0046099);
`
`and
`
`
`
`(4) claims 19 and 21-24 under 35 U.S.C. § 103 as unpatentable
`
`over Lamont (U.S. Application Publication 2003/0046099), Foster
`
`(U.S. Application Publication 2004/0073508), Keyes (U.S.
`
`Application Publication 2001/0044766, and Calhoun.
`
`C.
`
`Identification of References
`
`
`
`For future papers to be filed in this joined proceeding, the parties shall
`
`follow this usage for the terms “Foster,” “Lamont,” and “Keyes” when they
`
`are used alone without any modifier: “Foster” identifies and refers to U.S.
`
`Application Publication 2004/0073508; “Lamont” identifies and refers to
`
`U.S. Application Publication 2003/0046099; and “Keyes” identifies and
`
`refers to U.S. Application Publication 2001/0044766.
`
`D.
`
`Scheduling Order
`
`
`
`A revised scheduling order is issued in a separate and concurrent
`
`paper for this joined proceeding, which supersedes the scheduling order
`
`issued in CBM2013-00056 on March 10, 2014 (Paper 14).
`
`E.
`
`Exhibits
`
`
`
`Petitioner has five business days from the date of this communication
`
`to file in this joined proceeding those exhibits filed in CBM2014-00115 but
`
`not of record in CBM2013-00056, identifying them with the same exhibit
`
`numbers as used in CBM2014-00115, and also file an updated exhibit list
`
`pursuant to 37 C.F.R. § 42.63(e).
`
`
`
`
`
`4
`
`
`
`
`CBM2013-00056
`Patent 7,970,674
`
`
`
`Order
`
`
`
`
`
`
`
`It is
`
`ORDERED that all future papers for the joined proceeding of
`
`CBM2014-00115 and CBM2013-00056 are to be filed only in CBM2013-
`
`00056, and that no more paper shall be filed in CBM2014-00115;
`
`
`
`FURTHER ORDERED that the various grounds instituted for trial, as
`
`identified in Section A above are vacated and withdrawn such that they are
`
`no longer pending in this joined proceeding;
`
`
`
`FURTHER ORDERED that the various grounds as identified in
`
`Section B above, on the basis of which trial has been instituted in
`
`CBM2014-00115, are included for trial in this joined proceeding;
`
`
`
`FURTHER ORDERED that the scheduling order issued on March 10,
`
`2014 (Paper 14) is superseded by the revised scheduling order issued in a
`
`concurrent paper;
`
`
`
`FURTHER ORDERED that Petitioner shall file, within five business
`
`days of the date of this communication, those exhibits filed in CBM2014-
`
`00115 but not previously of record in CBM2013-00056, identifying them
`
`with the same exhibit numbers as used in CBM2014-00115, and also file an
`
`updated exhibit list pursuant to 37 C.F.R. § 42.63(e);
`
`
`
`FURTHER ORDERED that in future papers filed in this joined
`
`proceeding, “Foster” refers to U.S. Application Publication 2004/0073508;
`
`“Lamont” refers to U.S. Application Publication 2003/0046099; “Keyes”
`
`refers to U.S. Application Publication 2001/0044766”;
`
`
`
`FURTHER ORDERED that for this joined proceeding, the parties
`
`shall use the same caption as that used for this communication; and
`
`5
`
`
`
`
`CBM2013-00056
`Patent 7,970,674
`
`
`
`
`FURTHER ORDERED that Petitioner’s request, conveyed during the
`
`
`
`initial conference call held on April 1, 2014, to make of record U.S.
`
`Application Publication 2004/0073508, U.S. Application Publication
`
`2003/0046099, and U.S. Application Publication 2001/0044766 is dismissed
`
`as moot, in light of the joinder of CBM2014-00115 and CBM2013-00056.
`
`6
`
`
`
`
`
`
`
`
`For Petitioner:
`
`Michael Rosato
`Jennifer Schmidt
`mrosato@wsgr.com
`jschmidt@wsgr.com
`
`For Patent Owner:
`
`Steven D. Lawrenz
`Ryan J. McBrayer
`slawrenz@perkinscoie.com
`rmcBrayer@perkinscoie.com
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