Trials@uspto.gov Paper 12
`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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`AGILYSYS, INC., ET AL.
`Petitioner,
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`v.
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`AMERANTH, INC.
`Patent Owner.
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`
`Case CBM2014-00015
`Patent 6,384,850
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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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`
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`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.05
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`571-272-7822
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` Entered: February11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AGILYSYS, INC., ET AL.
`Petitioner,
`
`v.
`
`AMERANTH, INC.
`Patent Owner.
`
`
`Case CBM2014-00015
`Patent 6,384,850
`
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
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`Case CBM2014-00015
`Patent 6,384,850
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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 thirty-five companies are identified in the
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`petition as “Petitioners” and real parties-in-interest, the thirty-five companies
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`collectively constitute only a single party in this proceeding before the Board.
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`Consequently, the designation in the petition of fifteen pairs of lead and backup
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`counsel, one pair for each of fifteen groupings of the thirty-five companies, is
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`unacceptable. As a single party before the Board, all thirty-five companies must
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`speak with a uniform voice, whether in writing or orally in a conference call,
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`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 fifteen groups,
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`each with its own designated lead and backup counsel. Mr. Zembek explained that
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`with regard to paper filings, the thirty-five companies would always file a single
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`paper, sharing the allotted pages among themselves, and that in the event of
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`differences in the positions of different companies, there would be one or more
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`separate sections within the same paper to articulate the differences. Mr. Zembek
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`further explained that in case of telephone conference calls, he is authorized to
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`speak on behalf of all the listed companies, subject, however, to any objection that
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`may be advanced by a company that may have a different position on any issue.
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`When asked by the Board to clarify the timing of such “objection,” Mr. Zembek
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`explained that the “objection” would have to be offered immediately in the same
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`-2-
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`Case CBM2014-00015
`Patent 6,384,850
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`conference call. Under the scenario described by Mr. Zembek, it appears that even
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`the companies within the same grouping, which have appointed the same lead and
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`backup counsel, may not necessarily speak with a uniform voice, as they may not
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`share the 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 thirty-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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`
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`Because the thirty-five companies constitute, collectively, a single party,
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`they must speak with a single voice, both in writing and oral representation.
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`Mr. Zembek’s proposal transforms the “Petitioner” under 37 C.F.R. § 42.2 from a
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`single party into thirty-five different parties. That is not only contrary to 37 C.F.R.
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`§ 42.2, which defines “Petitioner” as a single party by referring to “the party filing
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`a petition,” but also prejudicial to Patent Owner, who potentially would have to
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`-3-
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`Case CBM2014-00015
`Patent 6,384,850
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`respond to thirty-five different, possibly inconsistent, positions on every issue.
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`Nor would the Board’s interests in the speedy and efficient resolution of post-grant
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`proceedings be served by permitting the presentation of inconsistent positions
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`based on the filing of a single petition.
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`
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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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`-4-
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`Case CBM2014-00015
`Patent 6,384,850
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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 thirty-
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`five companies identified in the petition as “Petitioners,” and that such counsel
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`should not make the oral representation unless that is in fact the case.
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`-5-
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`Case CBM2014-00015
`Patent 6,384,850
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`
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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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`Anthony Nimmo
`anthony.nimmo@icemiller.com
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`Brian Lum
`brian.lum@icemiller.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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`Barry Schindler
`schindlerb@gtlaw.com
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`Joshua Malino
`malinoj@gtlaw.com
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`Konrad Sherinian
`ksherinian@sherinianlaw.net
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`David Lesht
`slesht@emcpc.com
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`Emily Johnson
`johnsone@akingump.com
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`-6-
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`Case CBM2014-00015
`Patent 6,384,850
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`Kellie Johnson
`kmjohnson@akingump.com
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`Joseph Hanasz
`jhanasz@brinksgilson.com
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`Michael Babbit
`mbabbitt@jenner.com
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`Reginald Hill
`rhill@jenner.com
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`John Mills
`jmills@cooley.com
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`Jose Rodriguez
`jrodriguez@cooley.com
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`Jason Chumney
`jchumney@sorinrand.com
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`Nichole Martiak
`nmartiak@sorinrand.com
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`Mandala Decker
`mdecker@stites.com
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`William Ferrell
`wferrell@stites.com
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`Robert Scheinfeld
`robert.scheinfeld@bakerbotts.com
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`-7-
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`Case CBM2014-00015
`Patent 6,384,850
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`Eliot Williams
`eliot.williams@bakerbotts.com
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`Bing Ai
`ai@perkinscoie.com
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`Babak Tehranchi
`btehranchi@perkinscoie.com
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`Patrick McKeever
`pmckeever@perkinscoie.com
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`Gunnar Leinberg
`gunnarleinberg@leclairryan.com
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`Nicholas Gallo
`nicholas.gallo@leclairryan.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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`-8-
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