`571-272-7822
`
`
`
`
` Paper 12
`Entered: March 19, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EMC Corporation and VMware, Inc.
`Petitioner,
`
`v.
`
`Personal Web Technologies, LLC.
`Patent Owner.
`____________
`
`Cases IPR2013-00083 (Patent 6,415,280)
`IPR2013-00084 (Patent 7,945,544)
`IPR2013-00086 (Patent 7,949,662)
`IPR2013-00087 (Patent 8,001,096)1
`____________
`
`
`
`Before KEVIN F. TURNER, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`EMC Motion to Take Jurisdiction of Applications
`37 C.F.R. § 42.3(a)
`
`
`
`1 This decision addresses an issue that is identical in all four cases. Therefore, we
`exercise discretion to issue one opinion to be filed in each of the four cases. The
`parties, however, are not authorized to use this style heading in any subsequent
`papers.
`
`
`
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`
`
`
`
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`For each above-identified proceeding, EMC Corporation and VMware, Inc.
`(“EMC”) filed a petition under 35 U.S.C. § 311 to institute an inter partes review
`of a patent. The following are the involved patents in these proceedings before the
`Board: Patent 6,415,280, Patent 7,945,544, Patent 7,949,662, and Patent
`8,001,096. EMC’s petitions include a request that the Board take jurisdiction over,
`and suspend prosecution of, all related continuing applications including
`applications 13/091,380, 13/102,237, 13/109,208, 13/351,433, and 13/352,169.
`(Paper 6, “Pet.” 1-2, Ex. 1008.2) We treat the request as a motion.3 For the
`reasons infra, the motion is DENIED.
`In support of its request, EMC argues that the continuing applications may
`be used as a basis to present patentably indistinct claims which would be
`inconsistent with 37 C.F.R. § 42.73(d)(3)(i), and circumvent 37 C.F.R.
`§ 42.121(a)(3), which merely permits the patent owner to propose a reasonable
`number of substitute claims in a motion to amend claims. (Pet. 1.) We are not
`persuaded by EMC’s arguments because EMC fails to recognize that an inter
`partes review merely involves a review of the involved patent, rather than a
`family of patents and applications. See e.g., 35 U.S.C. 311(b) (“A petitioner in an
`inter partes review may request to cancel as unpatentable 1 or more claims of a
`patent.” Emphasis added.)
`
`
`2 For the purpose of clarity and expediency, IPR2013-00083 is representative and
`all citations are to IPR2013-00083 unless otherwise noted.
`3 A party requesting relief ordinarily must seek Board authorization to file a
`motion. 37 C.F.R. § 42.20. Here, we exercise our discretion to treat EMC’s
`request as a motion. 37 C.F.R. §§ 42.1(b) and 42.5(b). This decision makes no
`determinations on the other issues raised in the petitions.
`
`
`
`2
`
`
`
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`
`
`
`
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`Pursuant to 35 U.S.C. § 315(d), the Board may stay a reexamination
`proceeding, but only in the situation where the involved patent is subject to the
`reexamination. However, nothing in 35 U.S.C. § 315(d) provides the Board the
`authority to take jurisdiction over related continuing applications.
`EMC’s concern that the patent owner may circumvent the result of an inter
`partes review by presenting patentably indistinct claims in other applications is
`misplaced. Each application pending before the Office has been assigned to a
`designated deciding official. More importantly, the Director has delegated his or
`her authority under 35 U.S.C. § 131 (“The Director shall cause an examination to
`be made of the application . . . ”) to the Examining Corp. For each related
`continuing application, the designated patent examiner is the deciding official who
`has jurisdiction over that application. The examiner may suspend the application
`pending the outcomes of these inter partes review proceedings if the examiner
`determines such an action is appropriate.
`For the foregoing reasons, it is
`ORDERED that EMC’s request for the Board to exercise exclusive
`jurisdiction over all related continuing applications and to suspend prosecution of
`those applications is DENIED; and
`FURTHER ORDERED that a copy of this decision be entered in
`the administrative records of applications 13/091,380, 13/102,237, 13/109,208,
`13/351,433, and 13/352,169.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2013-00086, Patent 7,949,662
`IPR2013-00087, Patent 8,001,096
`
`
`
`
`IPR2013-00083, Patent 6,415,280
`IPR2013-00084, Patent 7,945,544
`
`
`PETITIONER:
`Peter M. Dichiara, Esq.
`David L. Cavanaugh, Esq.
`WILMER CUTLER PICKERING HALE & DORR LLP
`peter.dichiara@wilmerhale.com
`daidcavanaugh@wilmerhale.com
`
`
`PATENT OWNER:
`Joseph A. Rhoa, Esq.
`Updeep. S. Gill, Esq.
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`usg@nixonvan.com
`
`
`
`4
`
`
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