`Date: 13 January 2014
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
`
`CLOUDING IP, LLC
`Patent Owner
`____________
`
`Case IPR2013-00586
`Patent 6,738,799
`____________
`
`Before JAMESON LEE, RAMA G. ELLURU, and JUSTIN BUSCH,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2013-00586
`Patent 6,738,799
`
`
`
`
`
`INTRODUCTION
`A conference call was held on January 10, 2014, between respective counsel
`
`for the parties and Judges Lee, Elluru, and Busch. Counsel for Petitioner initiated
`the conference call to request authorization to file a reply to Patent Owner’s
`preliminary response, prior to the Board’s deciding whether to institute review.
`The conference call was transcribed by a court reporter arranged by Petitioner.
`DISCUSSION
`The Patent Owner’s preliminary response asserts that Petitioner failed to
`
`identify Google Inc. as a real party-in-interest. According to Patent Owner,
`because Google Inc. is a real party-in-interest which had been served, on May 24,
`2012, with a complaint alleging infringement of Patent 6,738,799, Petitioner’s
`petition is barred by the one-year time bar under 35 U.S.C. § 315(b). Paper 5, 20.
`According to counsel, Petitioner seeks an opportunity to respond to Patent Owner’s
`assertion that Google Inc. is a real party-in-interest, prior to the Board deciding
`whether to institute review.
`
`No rule automatically provides for a reply to a Patent Owner’s preliminary
`response. Where appropriate, however, the Board may authorize the filing of such
`a reply. See 37 C.F.R. § 42.5(a). During the conference call, upon inquiry from
`the Board, counsel for Petitioner indicated that the Petitioner is not without
`opportunity to address the issue concerning whether the petition is barred under
`35 U.S.C. § 315(b) and whether Google Inc. is a real party-in-interest, if the Board
`institutes inter partes review. Counsel for Petitioner explained that Petitioner’s
`concern is that based on Patent Owner’s unilateral assertion on these issues, the
`Board would regard Google Inc. as a real party-in-interest and treat the petition as
`barred under 37 C.F.R. § 315(b).
`
`2
`
`
`
`
`IPR2013-00586
`Patent 6,738,799
`
`
`The Board indicated that on the issue of whether the petition is barred under
`
`35 U.S.C. § 315(b), Petitioner does have a right to respond prior to any denial of
`the Petition on the basis of 35 U.S.C. § 315(b), but no such reply is necessary at
`this time.
`
`
`
`
`Conclusion
`
`It is
`
`ORDERED that Petitioner is not authorized to file a reply to Patent Owner’s
`
`preliminary response;
`
`FURTHER ORDERED that if the Board deems necessary to consider a
`reply from Petitioner regarding whether the petition is barred under 35 U.S.C.
`§ 315(b), prior to rendering a decision on whether to institute inter partes review,
`the parties will be notified by the Board; and
`
`FURTHER ORDERED that Petitioner shall file a copy of the conference
`call transcript as an exhibit as soon as it is available.
`
`3
`
`
`
`
`For Petitioner:
`Michael Kiklis
`Scott McKeown
`CPdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`
`For Patent Owner:
`Tarek Fahmi
`Amy Embert
`tarek.fahmi@fseip.com
`amy.embert@fseip.com
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