Paper 38
`Date: September 24, 2014
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TRULIA, INC.,
`Petitioner,
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`v.
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`ZILLOW, INC.,
`Patent Owner.
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`____________
`
`Case CBM2013-000561
`Patent 7,970,674 B2
`____________
`
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`Before JAMESON LEE, JOSIAH C. COCKS, and MICHAEL W. KIM,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`
`
`Order
`Decision on Motion for Time Extension
`37 C.F.R. § 42.5
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`1 Case CBM2014-00115 has been joined with this proceeding.
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`

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`CBM2013-00056
`Patent 7,970,674 B2
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`Introduction
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`On August 18, 2014, the parties filed a Joint Motion to Modify Schedule.
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`Paper 31. Specifically, the parties seek “to modify Due Dates 3–7 in the Revised
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`Scheduling Order (Paper No. 24) by one year, but no less than six months, in view
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`of a merger agreement between the parties.” Id. at 1. According to the parties, the
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`merger is expected to “close” sometime in 2015, and the merger agreement has
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`been submitted for review by the Federal Trade Commission (“FTC”). Id. The
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`parties imply that FTC approval is condition precedent to closing the merger
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`transaction.
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`Additionally, the joint motion request a 6-month extension of the 1-year
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`time to complete trial in this proceeding under 35 U.S.C. § 326(a)(11), or an
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`adjustment of the time period in which to complete trial, by up to 1 year, also
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`under 35 U.S.C. § 326(a)(11) in case of joinder. On August 27, 2014, we issued an
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`Order requiring supplemental information from the parties for consideration in
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`rendering a decision on the joint motion. Paper 33. The parties filed a Response
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`containing supplemental information, on September 12, 2014. Paper 35.
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`The motion is denied-in-part, and dismissed-in-part.
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`Discussion
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`According to the Response, on September 3, 2014, the FTC extended “an
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`initial waiting period” for at least 6 months. Paper 35. That adds at least 6 months
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`to the expected time until the merger agreement would be “closed” even if there is
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`no other delay or obstacle to overcome. The Response also indicates that if the
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`FTC does not approve the merger agreement, the FTC may file a lawsuit to keep
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`the merger agreement from closing. Id. In that event, the merger agreement
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`cannot close while the court case remains pending. Thus, there is a possibility that
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`the parties need an extension of multiple years. We asked the parties on what basis
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`2
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`CBM2013-00056
`Patent 7,970,674 B2
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`they believe this proceeding is likely to terminate. Paper 33. They answered
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`simply that they are “optimistic” the FTC would approve the merger agreement.
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`Paper 35. Such an answer, however, is not meaningful, as it is subjective and lacks
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`objective facts. The parties further indicate that until actual closing of the merger
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`agreement, the parties may decide, jointly, to amend the merger agreement for any
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`reason, and that either party may, under special circumstances, amend the
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`agreement. Id. The parties further indicate that the shareholders of their respective
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`companies are “expected” to approve the merger agreement. Id. The indication
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`makes evident that the shareholders have not yet approved the merger agreement.
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`These facts together present a scenario with numerous moving parts.
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`Almost everything is uncertain. Yet, the parties desire to delay this proceeding for
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`6 months to 1 year, simply to wait and see. The parties state that if the merger
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`agreement eventually is consummated, they will file a joint motion to terminate
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`proceeding. Paper 35. The parties do not desire to settle now, but look forward to
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`an opportunity in the future to settle, if and when all pertinent conditions develop
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`to align in favor of settlement. That, however, does not constitute good cause for
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`the requested extension of time for Due Dates 3–7. 2 Time extensions should not
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`be granted on the basis of speculation and conjecture.
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`We asked the parties why they are unable to negotiate a settlement
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`agreement that takes into account the uncertainty of FTC approval of the merger
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`agreement. Paper 33. The parties imply that such a settlement could be reached if
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`termination of the proceeding can be arranged without prejudice to the filing of
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`another petition, by stating that it is beyond their control whether the Board would
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`2 Under 37 C.F.R. § 42.5(c)(2), a request for an extension of time must be
`supported by a showing of good cause. To the extent that the parties characterize
`their request as a stay, we regard the requested stay as being no different from a
`long extension of time which similarly requires a showing of good cause.
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`3
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`CBM2013-00056
`Patent 7,970,674 B2
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`accept the filing of a new petition if the FTC disapproves the merger agreement,
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`citing 35 U.S.C. § 325(e)(1). Paper 35. The response is not sufficiently
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`meaningful. The parties do not explain why, if they can account for uncertainty of
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`FTC disapproval, they cannot account similarly for uncertainty of Board
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`acceptance of a new petition. It is unclear why the settlement terms cannot include
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`two options which address, respectively, the Board’s acceptance or non-acceptance
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`of a new petition filed after FTC disapproval of the merger agreement.
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`For the foregoing reasons, no good cause has been shown for an
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`extension of time of Due Dates 3–7. Because we grant no extension of Due
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`Dates 3–7, there is no need to consider adjustment of the 1-year period in
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`which to complete trial, under 35 U.S.C. § 326(a)(11), in case of joinder, and
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`also no need to consider an up to 6-month extension of the 1-year period in
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`which to complete trial, whether or not there is joinder, also under 35 U.S.C.
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`§ 326(a)(11).
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`It is
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`Order
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`ORDERED that the joint motion is denied with respect to any time
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`extension of Due Dates 3–7 and with respect to any stay of this proceeding;
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`FURTHER ORDERED that the joint motion is dismissed with respect to the
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`requested adjustment of the 1-year time period in which to complete trial in case of
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`joinder, under 35 U.S.C. § 326(a)(11); and
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`FURTHER ORDERED that the joint motion is dismissed with respect to the
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`requested 6-month extension of the 1-year period to complete trial, whether or not
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`there is joinder, under 35 U.S.C. § 326(a)(11).
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`4
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`

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`CBM2013-00056
`Patent 7,970,674 B2
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`For Petitioner:
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`Michael Rosato
`Jennifer Schmidt
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`jschmidt@wsgr.com
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`For Patent Owner:
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`Steven D. Lawrenz
`Ryan J. McBrayer
`PERKINS COIE, LLP
`slawrenz@perkinscoie.com
`rmcBrayer@perkinscoie.com
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`5