`571-272-7822
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` Entered: February11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FANDANGO, LLC, ET AL.
`Petitioner,
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`v.
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`AMERANTH, INC.
`Patent Owner.
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`Case CBM2014-00013
`Patent 6,982,733
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`Before JAMESON LEE, MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.05
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`Case CBM2014-00013
`Patent 6,982,733
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`Introduction
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`On February 7, 2014, the Board initiated a conference call with the parties,
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`to inform the parties that although five companies are identified in the petition as
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`“Petitioners” and real parties-in-interest, the five companies collectively constitute
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`only a single party in this proceeding before the Board. Consequently, the
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`designation in the petition of three pairs of lead and backup counsel, one pair for
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`each of three groupings of the five companies, is unacceptable. As a single party
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`before the Board, all five companies must speak with a uniform voice, whether in
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`writing or orally in a conference call, hearing, or deposition.
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`Discussion
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`The conference call began with the Board posing the following question to
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`Mr. Richard S. Zembek, counsel for Petitioner: how does he envision this
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`proceeding conducted with the Petitioner’s side being split into three groups, each
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`with its own designated lead and backup counsel. Mr. Zembek explained that with
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`regard to paper filings, the five companies would always file a single paper,
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`sharing the allotted pages among themselves, and that in the event of differences in
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`the positions of different companies, there would be one or more separate sections
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`within the same paper to articulate the differences. Mr. Zembek further explained
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`that in case of telephone conference calls, he is authorized to speak on behalf of all
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`the listed companies, subject, however, to any objection that may be advanced by a
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`company that may have a different position on any issue. When asked by the
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`Board to clarify the timing of such “objection,” Mr. Zembek explained that the
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`“objection” would have to be offered immediately in the same conference call.
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`Under the scenario described by Mr. Zembek, it appears that even the companies
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`Case CBM2014-00013
`Patent 6,982,733
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`within the same grouping, which have appointed the same lead and backup
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`counsel, may not necessarily speak with a uniform voice, as they may not share the
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`same position on any issue.
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`Counsel for Patent Owner objected to the manner of conducting this
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`proceeding, as proposed by Mr. Zembek, on the basis that Patent Owner would
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`have to respond to multiple differing positions offered from the same side.
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`The manner of conducting this proceeding, as proposed by Mr. Zembek, is
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`not in accordance with the rules governing trial practice and procedure before the
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`Board. The five companies collectively filed a single petition, and thus, are
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`recognized as a single party, as Petitioner, before the Board. According to
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`37 C.F.R. § 42.2, “Petitioner” means “the party filing a petition requesting that a
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`trial be instituted.” In circumstances not involving a motion for joinder or
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`consolidation of separate proceedings, for each “petition” there is but a single party
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`filing the petition, no matter how many companies are listed as petitioner or
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`petitioners and how many companies are identified as real parties-in-interest. Even
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`though the separate companies regard and identify themselves as “Petitioners,”
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`before the Board they constitute and stand in the shoes of a single “Petitioner.”
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`Because the five companies constitute, collectively, a single party, they must
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`speak with a single voice, both in writing and oral representation. Mr. Zembek’s
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`proposal transforms the “Petitioner” under 37 C.F.R. § 42.2 from a single party
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`into five different parties. That is not only contrary to 37 C.F.R. § 42.2, which
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`defines “Petitioner” as a single party by referring to “the party filing a petition,”
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`but also prejudicial to Patent Owner, who potentially would have to respond to five
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`different, possibly inconsistent, positions on every issue. Nor would the Board’s
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`Case CBM2014-00013
`Patent 6,982,733
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`interests in the speedy and efficient resolution of post-grant proceedings be served
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`by permitting the presentation of inconsistent positions based on the filing of a
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`single petition.
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`Also, during the conference call, the Board admonished counsel for Patent
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`Owner that every party must act with courtesy and decorum in this proceeding, as
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`is required by 37 C.F.R. § 42.1(c), and that Patent Owner’s preliminary response
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`does not exhibit proper decorum. Counsel for Patent owner acknowledged the
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`inappropriateness of certain statements in the preliminary response, and withdrew
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`the request in the preliminary response that the petition be denied on the alleged
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`ground that Petitioner has acted unethically.
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`Conclusion
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`The current designation of counsel by Petitioner fails to identify either a lead
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`attorney or backup counsel for the Petitioner in accordance with 37 C.F.R.
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`§ 42.10(a).
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`It is
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`ORDERED that within one week of the day of this communication,
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`Petitioner shall file a paper to re-designate lead and backup counsel in accordance
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`with 37 C.F.R. § 42.10(a) by regarding itself as a single party, and provide updated
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`service information in light of the re-designation of lead and backup counsel;
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`FURTHER ORDERED that Petitioner is not authorized to divide any paper
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`it submits in this proceeding into separate parts where any part is indicated as
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`submitted on behalf of less than all of the companies it has identified in the petition
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`as “Petitioners”; and
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`Case CBM2014-00013
`Patent 6,982,733
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`FURTHER ORDERED that in any hearing, telephone conference call, or
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`deposition to be taken for this proceeding, any counsel making an oral
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`representation from the side of Petitioner is presumed to speak for all of the five
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`companies identified in the petition as “Petitioners,” and that such counsel should
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`not make the oral representation unless that is in fact the case.
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`Case CBM2014-00013
`Patent 6,982,733
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`For PETITIONER:
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`Richard Zembek
`richard.zembek@nortonrosefulbright.com
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`Gilbert Greene
`bert.greene@nortonrosefulbright.com
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`James Heinz
`jim.heintz@dlapiper.com
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`Ryan Cobb
`ryan.cobb@dlapiper.com
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`Thomas Cunningham
`tcunningham@brookskushman.com
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`For PATENT OWNER:
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`John Osborne
`josborne@osborneipl.com
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`Michael Fabiano
`mdfabiano@fabianolawfirm.com
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