Trial@uspto.gov
`571-272-7822
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` Paper 15
` Entered: March 10, 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 Proceeding
`37 C.F.R. § 42.5
`
`
`
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`571-272-7822
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` Paper 15
` Entered: March 10, 2014
`
`
`
`
`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 Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Case CBM2014-00015
`Patent 6,384,850
`
`
`Introduction
`
`
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`On February 11, 2014, the Board ordered Petitioner to file, within one week
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`of the date of the Order (Paper 12), a paper to re-designate lead and backup
`
`counsel in accordance with 37 C.F.R. § 42.10(a) by regarding itself as a single
`
`party, and to provide updated service information in light of the re-designation of
`
`lead and backup counsel. To this date, Petitioner remains in non-compliance
`
`with the Order and 37 C.F.R. § 42.10(a). Although Petitioner did file, on
`
`February 18, 2014, a Notice of Re-Designation of Lead and Backup Counsel, the
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`paper purports to redefine Petitioner, without authorization of the Board, as
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`excluding Apple Inc., one of the 35 companies which jointly filed the petition in
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`this proceeding. Paper 13.
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`
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`Petitioner filed no request for rehearing of the Board’s Order of
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`February 11, 2014, prior to filing the non-compliant paper dated
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`February 18, 2014. Petitioner further did not alert the Board of its non-
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`compliance. The Board noticed the non-compliance on its own, and then
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`initiated a telephone conference call to discuss the matter. The conference call
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`was held on March 7, 2014. The participants were respective counsel for the
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`parties and Judges Lee, Petravick, Rice, and White.
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`Discussion
`
`
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`The conference call began with the Board stating the impropriety of
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`Petitioner’s actions in responding to the Board’s Order of February 11, 2014. Had
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`the Board not noticed the non-compliance, this proceeding would have continued
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`indefinitely without a clear picture of the constitution of Petitioner or a clear
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`designation of lead and backup counsel. More importantly, Petitioner chose to file
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`
`
`-2-
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`
`
`Case CBM2014-00015
`Patent 6,384,850
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`a paper purporting to re-designate counsel for less than all of the companies that
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`jointly filed the petition and that the Board ruled collectively constitute Petitioner,
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`without seeking an opportunity to explain its difficulties to the Board and to ask for
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`an alternative resolution. Such conduct is inappropriate. We give notice to
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`Petitioner that such action should not be repeated. It should have contacted the
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`Board, prior to filing a noncompliant paper, to discuss an alternative resolution.
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`
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`Notwithstanding the contrary indication in Paper 13, Apple Inc. remains a
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`member of the group of 35 companies that is collectively regarded as Petitioner.
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`That will remain so unless and until the Board authorizes withdrawal of Apple Inc.
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`from the proceeding or terminates the proceeding with respect to Apple Inc.
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`
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`Counsel for Petitioner asked that the required filing of a paper re-designating
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`lead and backup counsel for Petitioner as one party be postponed until after the
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`Board has decided whether to allow Apple Inc. to withdraw from this proceeding.
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`The postponement request is granted.
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`
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`Counsel for Petitioner explained that Petitioner would like to seek
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`authorization for Apple Inc. to withdraw from this proceeding. The Board stated
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`that the parties can move jointly to terminate the proceeding with respect to Apple
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`Inc. See 37 C.F.R. § 42.74. However, counsel for Patent Owner stated that Patent
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`Owner and Petitioner have not reached an agreement that would lead to the filing
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`of a joint motion to terminate the proceeding with respect to Apple Inc., and that
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`Patent Owner opposes the withdrawal of Apple Inc. from the proceeding at this
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`time.
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`
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`Under these circumstances, we authorize briefing by the parties as to why
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`Petitioner should be allowed to reconstitute itself to exclude Apple, Inc. During
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`
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`-3-
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`Case CBM2014-00015
`Patent 6,384,850
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`the conference call, we suggested that such briefing from Petitioner be filed as a
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`belated rehearing request. Upon further consideration, however, we rescind that
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`authorization, and require that Petitioner’s briefing be filed as a Motion to
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`Reconstitute Petitioner to Exclude Apple Inc., subject to 37 C.F.R. § 42.20.
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`It is
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`Order
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`ORDERED that Petitioner is authorized to file a Motion to Reconstitute
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`
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`Petitioner to Exclude Apple Inc., by March 12, 2014, limited to 7 pages;
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`
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`FURTHER ORDERED that in the motion, Petitioner shall specifically
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`address what withdrawal of Apple Inc. would enable Apple Inc. to do, in terms of
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`filing or maintaining other petitions or actions against Patent Owner with regard to
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`the same patent, including, but not limited to, an additional inter partes review
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`petition or covered business method patent review petition, which it otherwise
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`could not do if not withdrawn from this proceeding; and why no prejudice would
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`be imposed on Patent Owner by allowing Apple Inc. to withdraw at this time;
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`
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`FURTHER ORDERED that Patent Owner is authorized to file a Response to
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`Petitioner’s motion, limited to 7 pages, within 5 calendar days of the date of filing
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`of Petitioner’s motion;
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`
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`FURTHER ORDERED that Petitioner is authorized to file a Reply, limited
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`to 5 pages, to Patent Owner’s Response, within 5 calendar days of the filing of
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`Patent Owner’s opposition;
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`
`
`
`-4-
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`
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`Case CBM2014-00015
`Patent 6,384,850
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`
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`FURTHER ORDERED that if all of Petitioner’s constituents do not speak
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`with one voice in the motion, the motion will be dismissed and not considered on
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`the merits.
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`
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`For PETITIONER:
`
`Richard Zembeck
`Gilbert Greene
`richard.zembeck@nortonrosefulbright.com
`bert.greene@nortonrosefulbright.com
`
`
`For PATENT OWNER:
`
`John Osborne
`Michael Fabiano
`josborne@osborneipl.com
`mdfabiano@fabianolawfirm.com
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`-5-
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`
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