Trials@uspto.gov Paper 6
`571-272-7822
`
`Entered: June 30, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`571-272-7822
`
`Entered: June 30, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`Patent Owner sent an email to the Board on June 24, 2016, requesting
`authorization to file a motion for a 45-day extension of time to file its
`preliminary responses. On June 29, 2016, the following individuals
`participated in a conference call:
`(1) Messrs. Jae Youn Kim and Sang Ho Lee, counsel for Patent Owner,
`and Mr. Nader Asghari-Kamrani, one of the named inventors;
`(2) Messrs. Thomas Rozylowicz and W. Karl Renner, counsel for
`Petitioner; and
`(3) Joni Y. Chang, Justin T. Arbes, and Frances L. Ippolito,
`Administrative Patent Judges.
`For the reasons set forth below, Patent Owner’s request is denied.
`
`Improper email communications
`
`As an initial matter, Patent Owner’s email sent on June 24, 2016, as
`well as Petitioner’s initial email sent on July 27, 2016, were improper
`because each email included attachments and substantive arguments. The
`parties are directed to the instructions (reproduced below) provided on the
`Board’s Web site at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding
`the proper use of email communication to the Board.
`To request a conference call for a particular case (e.g., to request
`authorization
`to file a motion), contact
`the Board at
`Trials@uspto.gov (link sends e-mail). The email should copy
`the other party or parties to the proceeding, indicate generally the
`relief being requested or the subject matter of the conference call,
`state whether the opposing party or parties oppose the request,
`and include times when all parties are available. Unless
`otherwise authorized, do not include attachments in the email and
`
`2
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`do not use the Trials@uspto.gov (link sends e-mail) email
`address for substantive communications to the Board. Parties
`may also contact the Board by telephone at (571) 272-7822.
`In addition, neither party followed these instructions, even after the
`Board’s administrative staff repeatedly requested the parties to confer and
`jointly propose several dates and times when both parties are available for a
`conference call. For the future, we strongly encourage the parties to confer
`and attempt to resolve issues among themselves first before emailing the
`Board. The parties are directed to 37 C.F.R. § 42.1(c), which provides that
`“[e]very party must act with courtesy and decorum in all proceedings before
`the Board, including in interactions with other parties.” Each party should
`be responsive to communications from the opposing party and the Board,
`including its administrative staff. Parties should be mindful that, because the
`Board has limited resources, actions that cause unnecessary delay or increase
`the cost of the proceedings would have a negative impact on the Board’s
`efficiency and ability to timely complete the proceedings.
`
`Request for an extension of time
`
`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. The Board’s trial rules are
`“construed to secure the just, speedy, and inexpensive resolution of every
`proceeding.” See 37 C.F.R. § 42.1(b).
`In each CBM proceeding challenging U.S. Patent No. 8,266,432 B2
`(“the ’432 patent”), Patent Owner filed a Power of Attorney, appointing
`Mr. Jae Youn Kim, as the lead counsel, as well as Messrs. Harold L. Novick
`
`3
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`and Sang Ho Lee, as the back-up counsel. Paper 4, 2.2 The parties indicate
`that the ’432 patent has been asserted in Asghari-Kamrani et al. v. United
`Services Automobile Association, Case No. 2:15-cv-00478-RGD-LRL (E.D.
`Va.). Paper 2, 2; Paper 5, 2.
`
`During the conference call, Patent Owner indicated that it wishes to
`appoint its district court litigation counsel, Mei & Mark, LLP, as new
`counsel for the instant CBM proceedings, and argued that it has a right to
`appoint its own counsel. Patent Owner filed a motion in the district court on
`June 3, 2016, seeking confirmation that the protective order entered in the
`district court proceeding does not bar its litigation counsel from participating
`in the instant CBM proceedings. Patent Owner explained that its litigation
`counsel could not participate in the instant CBM proceedings for at least 45
`days because of the pending motion. Therefore, Patent Owner is requesting
`authorization to file a motion for a 45-day extension of time, extending the
`due date for filing its preliminary responses in the instant CBM proceedings
`to September 25, 2016.
`Patent Owner’s request is based on the speculation that the district
`court would grant its motion, permitting its litigation counsel, to participate
`in the instant CBM proceedings within 45 days. Notably, as Patent Owner
`noted, its litigation counsel’s participation in the instant CBM proceedings
`would be delayed for at least 45 days. That delay could possibly be longer,
`
`
`2 All citations are to CBM2016-00063, as representative, unless otherwise
`noted.
`
`4
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`and whether the district court would grant Patent Owner’s motion is
`uncertain at this time.
`In addition, Patent Owner’s current counsel in the instant CBM
`proceedings, Messrs. Kim, Novick, and Lee, also represented Patent Owner
`in other related proceedings before the Office. For example, Messrs. Kim
`Novick, and Lee, on the behalf of Patent Owner, filed a Preliminary
`Response on December 10, 2015, in a related inter partes review
`proceeding, IPR2015-01842 (Paper 7), which likewise challenged
`the ’432 patent. Patent Owner indicated that there is substantial overlap
`between IPR2015-01842 and the instant CBM proceedings, but nevertheless
`did not provide meaningful explanation why its current counsel, Messrs.
`Kim, Novick, and Lee, could not prepare and file the preliminary responses
`in the instant CBM proceedings.
`Nor did Patent Owner explain why it reasonably could not have filed
`its motion in the district court earlier. The IPR2015-01842 Petition was filed
`on September 1, 2015, the related lawsuit was filed in the district court on
`October 30, 2015, and the instant CBM Petitions were filed on May 2, 2016.
`Yet, Patent Owner did not file its motion in the district court until June 3,
`2016, and did not seek relief from the Board until June 24, 2016.
`In addition, although 37 C.F.R. § 42.207(b) provides a three-month
`time period for filing a preliminary response, a preliminary response is
`optional. In fact, the rule provides that a patent owner may expedite the
`proceeding by filing an election to waive the preliminary response. Even
`without a preliminary response, the Board will review each petition and
`
`5
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`determine whether to institute trial on a claim-by-claim and ground-by-
`ground basis, streamlining the issues by authorizing a trial only on the
`claims and grounds for which the threshold standard has been satisfied. See
`37 C.F.R. § 42.208.
`Based on the totality of the circumstances and the facts currently
`before us, we are not persuaded at this time that Patent Owner has presented
`an adequate basis to support its request for an extension of time with a
`showing of good cause. See 37 C.F.R. § 42.5(c)(2). Should the
`circumstances in these proceedings or in the district court case change, the
`parties may request another conference call.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for leave to file a motion for
`a 45-day extension of time for filing a preliminary response in each covered
`business method patent review proceeding identified above is denied.
`
`
`
`6
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`
`
`
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`CBM36137-0007CP1@fr.com
`CBM36137-0007CP2@fr.com
`PTABInbound@fr.com
`
`7
`
`For PATENT OWNER:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`NOVICK, KIM & LEE, PLLC
`skim@nkllaw.com
`hnovick@nkllaw.com
`slee@nkllaw.com
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