UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`_
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____
`______________________
`
`
`
`
`
`Agilysys, Inc. et al.
`
`Petitioner
`
`v.
`
`Ameranth, Inc.
`
`Patent Owner
`_________________________
`
`______________________
`
`Petitions Numbered CBM2014-00015
`Patent No. 6,384,850
`_________________________
`______________________
`
`
`
`MOTION TO RECONSTITUTE PETITIONER TO EXCLUDE APPLE INC.
`UNDER 37 C.F.R. § 42.20
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`96811686.1
`
`
`
`______________________
`_
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____
`______________________
`
`
`
`
`
`Agilysys, Inc. et al.
`
`Petitioner
`
`v.
`
`Ameranth, Inc.
`
`Patent Owner
`_________________________
`
`______________________
`
`Petitions Numbered CBM2014-00015
`Patent No. 6,384,850
`_________________________
`______________________
`
`
`
`MOTION TO RECONSTITUTE PETITIONER TO EXCLUDE APPLE INC.
`UNDER 37 C.F.R. § 42.20
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`96811686.1
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
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`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND FACTS ............................................................................... 2
`II.
`III. ARGUMENT .................................................................................................. 3
`A. Apple Had A Good-Faith Belief That It Would Be Allowed To
`Proceed With Its Chosen Counsel In The Existing Proceedings ......... 4
`Petitioner Requests Permission For Petitioner To Be
`Reconstituted To Exclude Apple From The Existing
`Proceedings So That Apple Can File Its Own Petitions Together
`With Joinder Requests .......................................................................... 5
`C. Ameranth Will Experience No Prejudice From Apple’s
`Exclusion .............................................................................................. 6
`IV. CONCLUSION ............................................................................................... 7
`
`
`B.
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`
`
`
`
`-i-
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`I.
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`INTRODUCTION
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`In accordance with 37 C.F.R. § 42.20 and the Board’s March 10, 2014
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`Orders on Conduct of Proceedings in CBM2014-00013 (Paper 18), CBM2014-
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`00014 (Paper 14), CBM2014-00015 (Paper 15), and CBM2014-00016 (Paper 14)
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`(collectively, the “Existing Proceedings”), Petitioner requests to be allowed to
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`reconstitute itself to exclude Apple Inc. (“Apple”). The Board’s Februray 11, 2014
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`Orders on Conduct of the Proceedings in CBM2014-00013 (Paper 14), CBM2014-
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`00014 (Paper 11), CBM2014-00015 (Paper 12), and CBM2014-00016 (Paper 11)
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`were contrary to Petitioner’s understanding of the rules, and with a different
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`understanding, Apple, as one party constituting Petitoner, would have proceeded in
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`a different manner before the Board. Petitioner therefore requests that Petitioner
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`be allowed to reconstitute itself to exclude Apple from the Existing Proceedings
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`without the imposition of any estoppel against Apple, and permit Apple to file
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`separate petitions, identical to those on file that will not raise any new issues or
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`arguments together with requests for joinder with the Existing Petitions. Granting
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`Petitioner’s request will allow Apple to proceed with counsel of its own choosing.
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`Petitioner believes that Patent Owner (“Ameranth”) would not be prejudiced if the
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`Board were to grant Petitioner’s request. The Board may grant this relief under
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`and consistent with 37 C.F.R. § 42.5(a) and (b), which “permit administrative
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`patent judges wide latitude in administering the proceedings to balance the ideal of
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`96811686.1
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`precise rules against the need for flexibility to achieve reasonably fast,
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`inexpensive, and fair proceedings.” 77 FR 48611, 48616.
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`II. BACKGROUND FACTS
`On October 15, 2013, Petitioner, which included Apple along with a number
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`
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`of other parties, filed four petitions for Covered Business Method (“CBM”)
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`Review of patent numbers 6,982,733 (CBM2014-00013), 8,146,077 (CBM2014-
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`00014), 6,384,850 (CBM2014-00015), and 6,871,325 (CBM2014-00016) (the
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`“Petitions”). Each party listed on the Petitions as Petitioner originally individually
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`designated its own counsel such that multiple lead counsel were designated. On
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`February 7, 2014, the Board held a telephonic conference with Petitioner and
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`Ameranth to discuss how to proceed with multiple parties listed as a single
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`petitioner. On February 11, 2014, the Board ordered all parties to be listed as a
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`single petitioner and represented by a single lead counsel. See Paper 14
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`(CBM2014-00013), Paper 11 (CBM2014-00014), Paper 12 (CBM2014-00015),
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`and Paper 11 (CBM2014-00016) (collectively, the “Orders”). Because of the
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`unanticipated requirement to be represented by a single lead counsel that Apple
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`had not selected for itself, Apple sought to withdraw from the Petitions. Apple
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`contacted Ameranth regarding the proposed withdrawal. However, the parties
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`were unable to reach agreement and contacted the Board seeking guidance in
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`resolving Apple’s request for withdrawal. On March 7, 2014, the Board held a
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`conference call and ordered this briefing to address Apple’s proposed withdrawal
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`and any prejudice that may affect the parties, including whether any prejudice may
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`result from allowing Apple to file its own CBM petitions that are duplicates of
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`those currently before the Board and seek joinder to the current proceedings. On
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`March 10, 2014, the Board issued an Order on Conduct of the Proceedings
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`directing Petitioner to file the instant Motion to Reconstitute Petitioner to Exclude
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`Apple Inc. See CBM2014-00013 (Paper 18), CBM2014-00014 (Paper 14),
`
`CBM2014-00015 (Paper 15), and CBM2014-00016 (Paper 14).
`
`III. ARGUMENT
`The Board’s orders requiring all parties named on the Petitions to appoint a
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`single lead counsel were contrary to Petitioner’s understanding of the rules
`
`governing the Existing Proceedings, and Apple, individually, would have
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`proceeded in a different manner if it had the understanding it now does as a result
`
`of the Board’s orders. Given the relatively recent establishment of the CBM
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`review process and corresponding lack of authority on this issue, it appears this is a
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`matter of first impression and Petitioner’s good-faith misunderstanding of the rules
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`was reasonable. Fortunately, however, a simple solution exists: Petitioner can be
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`reconstituted to exclude Apple such that Apple can withdraw from the Existing
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`Proceedings and file its own petitions duplicating those on file that do not raise
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`new issues or arguments together with a request for joinder with the Existing
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`Proceedings. This would resolve this matter in a way that prejudices no party.
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`Moreover, allowing Petitioner to reconstitute itself to exclude Apple in this
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`instance will not create future problems in other proceedings because the Board’s
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`February 11th Order and its decision on this Motion will provide clear notice to
`
`parties filing future CBM petitions with multiple parties that the single lead
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`counsel requirement applies.
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`A. Apple Had A Good-Faith Belief That It Would Be Allowed To
`Proceed With Its Chosen Counsel In The Existing Proceedings.
`
`Petitioner notes that prior to the Board’s Orders requiring the re-designation
`
`of lead and backup counsel, no explicit requirement for a single lead counsel for
`
`multiple parties joining a single CBM petition was known to Apple. Indeed, prior
`
`to filing the petition, Petitioner (including Apple) researched previously-filed
`
`multi-party petitions and were aware that the petition in IPR2013-00026, listing
`
`separate lead counsel for petitioners Denso and Clarion, had been accepted and
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`allowed to reach an advanced stage without any requirement for designation of a
`
`single lead counsel for petitioners. This understanding was consistent with 35
`
`U.S.C. §§ 317(a) and 327(a), which allow inter partes and post-grant reviews to be
`
`terminated with respect to “a petitioner” and further provides that “[i]f no
`
`petitioner remains in the inter partes [or post-grant] review, the Office may
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`terminate the review . . . .” A reasonable reading of this language is that each party
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`to a petition could be a separate “petitioner” and thus retain lead and backup
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`counsel separate from its fellow “petitioners.” Accordingly, Apple’s good-faith
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`belief that it would be allowed to proceed with counsel of its choice, while
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`mistaken, was reasonable under the circumstances.
`
`B.
`
`Petitioner Requests Permission For Petitioner To Be
`Reconstituted To Exclude Apple From The Existing Proceedings
`So That Apple Can File Its Own Petitions Together With Joinder
`Requests.
`
`One option available to Apple at the time the Petitions in the Existing
`
`Proceedings were filed was to file its own petitions, which could have raised any
`
`issues or arguments of Apple’s choice. Had Apple chosen to proceed in that
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`manner, it also had the option of requesting joinder with the Existing Proceedings.
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`37 C.F.R. § 42.222(a)-(b). Petitioner conferred with Patent Owner, and Patent
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`Owner indicated it would oppose this motion. Accordingly, Petitioner now
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`respectfully requests that Petitioner be allowed to reconstitute itself to exclude
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`Apple so that Apple can refile its own duplicate petitions to exercise these options
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`so that Apple may be represented by counsel of its choosing. While Petitioner
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`expects that the parties’ positions will be in alignment throughout the proceeding,
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`this would allow Apple to preserve its ability to articulate a difference of opinion
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`in the event this occurs. Alternatively, if Apple is not permitted to proceed in this
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`manner, Petitioner respectfully requests that it be allowed to reconstitute itself to
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`exclude Apple from the current proceedings without imposition of any estoppel on
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`Apple because, as discussed above, Apple had a good faith understanding of the
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`rules that was different from that reflected in the Board’s orders, and Apple would
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`have chosen to proceed in a different manner if it had knowledge of the single lead
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`counsel requirement.
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`C. Ameranth Will Experience No Prejudice From Apple’s Exclusion.
`Permitting Petitioner to reconstitute itself to exclude Apple from the
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`Existing Proceedings and permit Apple to then file its own duplicate petitions,
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`coupled with a request for joinder to the Existing Proceedings, will not prejudice
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`Ameranth in any way because Ameranth would be in the exact same position it is
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`today. Because Apple’s duplicate petitions will not raise any new issues or
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`arguments, Ameranth will not be forced to defend against any prior art or
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`invalidity assertions that it does not already face in the Existing Proceedings. Nor
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`will Ameranth be forced to contemplate settlement with any additional party. With
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`no change to its position, Ameranth cannot claim prejudice.
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`During the conference call with the Board, Ameranth mentioned that it
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`would be placed at an unfair disadvantage by allowing Apple to withdraw because
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`Apple would have the ability to see Ameranth’s replies to the Petitions in the
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`Existing Proceedings before filing any new Petitions. Any possibility of such
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`hypothetical prejudice is avoided by a requirement that any petitions filed by
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`Apple not raise any new issues or arguments.
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`On the other hand, Ameranth’s position on the conference call that Apple
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`only be allowed to withdraw if it accepts an adverse judgment is unduly and
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`unnecessarily prejudicial to Apple. As discussed above, Apple’s good faith belief
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`that it could be represented by counsel of its choice was reasonable albeit
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`mistaken. Under these circumstances, requiring Apple to accept an estoppel that
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`would prevent it from raising any issues – even those not raised in the Petitions in
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`the Existing Proceedings and regardless of whether the Board institutes trial or
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`issues a final decision on those Petitions – imposes a substantial hardship on Apple
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`that is not necessary to protect any reasonable interest of Ameranth for the reasons
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`discussed above.
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`IV. CONCLUSION
`For the reasons discussed above, Petitioner requests that it be reconstituted
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`
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`to exclude Apple so that Apple may file its own duplicate petitions naming its own
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`counsel together with requests for joinder to the Existing Proceedings or,
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`alternatively, that Petitioner be reconstituted to exclude Apple without the
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`imposition of estoppel.
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`Respectfully submitted,
`
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`
`Fulbright & Jaworski LLP
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Tel: 713-651-5151 / Fax: 713-651-5246
`richard.zembek@nortonrosefulbright.com
`
`Attorney for Petitioner
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)
`
`I certify that a copy of the foregoing Motion to Reconstitute Petitioner to
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`
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`
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`Exclude Apple Inc. Under 37 C.F.R. § 42.20 was served on March 12, 2014, by
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`causing it to be sent by email to counsel for the Patent Owner at the following
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`email addresses:
`
`John W. Osborne
`OSBORNE LAW LLC
`Email: josborne@osborneipl.com
`
`Michael D. Fabiano
`FABIANO LAW FIRM, P.C.
`Email: mdfabiano@fabianolawfirm.com
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`
`
`
`
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`96811686.1
`WEST\247201113.1
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`8
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