Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 28
`
` Entered: October 17, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`Petitioner
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016
`Patent 6,441,828
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Real-parties-in-interest Research In Motion Corporation and Research In
`Motion Limited have changed their names to “BlackBerry Corporation” and
`“BlackBerry Limited,” respectively. Paper 22.
`
`
`571-272-7822
`
`
`
` Paper 28
`
` Entered: October 17, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORPORATION and BLACKBERRY LIMITED1
`Petitioner
`
`v.
`
`MOBILEMEDIA IDEAS LLC
`Patent Owner
`____________
`
`Case IPR2013-00016
`Patent 6,441,828
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Real-parties-in-interest Research In Motion Corporation and Research In
`Motion Limited have changed their names to “BlackBerry Corporation” and
`“BlackBerry Limited,” respectively. Paper 22.
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`On October 16, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Turner, Chang, and Deshpande.
`
`The call was initiated jointly by the parties, requesting: (1) leave to file a
`
`joint motion to terminate the instant proceeding on the basis that the parties
`
`have reached a settlement agreement, (2) the entry of the pending motion to
`
`amend claims, (3) the settlement agreement be treated as business
`
`confidential information, and (4) the cancellation of the oral hearing on
`
`October 18, 2013.
`
`During the conference call, the Board first provided a brief summary
`
`of the status of the proceeding and asked MobileMedia a few preliminary
`
`questions regarding the status of the original challenged claims 6, 7, 15, 17,
`
`and 18 of patent 6,441,828 (“the ’828 patent”). On March 18, 2013, the
`
`Board issued a decision (Paper 16) instituting the instant inter partes review
`
`as to the challenged claims based on four grounds of unpatentability under
`
`35 U.S.C. §§ 102 and 103. In that decision, the Board determined that there
`
`is a reasonable likelihood that those challenged claims are unpatentable.
`
`Paper 16. MobileMedia did not file a patent owner response. Instead,
`
`MobileMedia filed a motion to amend, cancelling claims 6, 7, 15, 17, and
`
`18, and proposing five substitute claims. Paper 21. Blackberry filed an
`
`opposition to MobileMedia’s motion to amend (Paper 23), and MobileMedia
`
`filed a reply to Blackberry’s opposition (Paper 24).
`
`The Board indicated that, based on the record of this proceeding,
`
`MobileMedia appeared to concede that claims 6, 7, 15, 17, and 18 are
`
`unpatentable based on the grounds instituted. MobileMedia confirmed that
`
`2
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`it did not contest those grounds of unpatentability. Upon further discussion,
`
`MobileMedia conceded that claims 6, 7, 15, 17, and 18 had been canceled.
`
`Next, the Board stated that the filing of a joint motion to terminate the
`
`instant proceeding is authorized. The Board also indicated that the joint
`
`motion must include a sufficient explanation as to why termination is
`
`appropriate, especially at such a late stage when both parties already filed all
`
`of their written briefs. Under 35 U.S.C. § 317(a), the Board has the option
`
`to first terminate the proceeding with respect to Blackberry and then, with no
`
`petitioner remaining in the proceeding, proceed to a final written decision.
`
` The parties indicated that Blackberry is not opposing MobileMedia’s
`
`request for entry of the motion to amend (Paper 21). As explained by the
`
`Board during the conference call, proposed substitute claims are not entered
`
`as matter of right, even in the situation where the parties reached a
`
`settlement agreement. Notably, MobileMedia, as a movant, has the burden
`
`to show entitlement to the relief requested. 37 C.F.R. §§ 42.20(c) and
`
`42.121. The Board will determine whether MobileMedia’s motion to amend
`
`complies with the regulatory and statutory requirements. See, e.g., 35
`
`U.S.C. §§ 316(d) and 318(a).
`
`The joint motion to terminate also must be accompanied by a true
`
`copy of the settlement agreement in connection with the termination of this
`
`proceeding, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`With respect to requesting that the settlement agreement be treated as
`
`business confidential information under 37 C.F.R. § 42.74(c), the Board
`
`indicated that the parties must file the confidential settlement agreement, as
`
`3
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`an exhibit, electronically via the Patent Review Processing System (PRPS)
`
`in accordance with the instructions provided on the Board’s website
`
`(uploading as “Parties and Board Only”). For more information, see FAQ
`
`G2 on the Board’s website page at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`
`their settlement agreement as confidential.
`
`Lastly, the Board granted the parties’ request for cancellation of the
`
`oral hearing.
`
`Accordingly, it is
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate within five business days from the date of this Order;
`
`FURTHER ORDERED that the joint motion must be accompanied by
`
`a true copy of the parties’ settlement agreement in connection with the
`
`termination of this proceeding, as required by 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b);
`
`FURTHER ORDERED that the parties may file a separate paper
`
`requesting that the settlement agreement be treated as business confidential
`
`information as specified in 37 C.F.R. § 42.74(c);
`
`FURTHER ORDERED that any confidential settlement agreement
`
`must be filed, as an exhibit, electronically in PRPS in accordance with the
`
`instructions provided on the Board’s website (uploading as “Parties and
`
`Board Only”); and
`
`FURTHER ORDERED that the oral hearing for the instant
`
`proceeding is cancelled.
`
`4
`
`
`
`Case IPR2013-00016
`Patent 6,441,828
`
`
`
`
`
`
`
`PETITIONER:
`
`Robert C. Mattson
`Oblon Spivak
`cpdocketmattson@oblon.com
`
`
`PATENT OWNER:
`
`Anthony C. Coles
`PROSKAUER ROSE LLP
`acoles@proskauer.com
`
`5
`
`
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