`571-272-7822
`
`Date: November 8, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZOLL LIFECOR CORPORATION
`Petitioner
`
`v.
`
`PHILLIPS ELECTRONICS NORTH AMERICA CORPORATION
`Patent Owner
`____________
`
`Cases IPR2013-00609 (Patent 5,836,978)
`IPR2013-00612 (Patent 5,803,927)
`IPR2013-00613 (Patent 5,735,879)
`IPR2013-00615 (Patent 6,047,212)
`IPR2013-00616 (Patent 5,749,905)
`IPR2013-00618 (Patent 5,607,454)1
`____________
`
`Before SALLY C. MEDLEY and MIRIAM L. QUINN, Administrative Patent
`Judges.
`
`MEDLEY, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`1 This order addresses a similar issue in the six cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
`
`
`
`
`
`
`
`On November 5, 2013, a conference call was held between counsel for the
`respective parties and Judges Medley and Quinn. 2
`The purpose of the conference call was for Patent Owner to seek Board
`authorization to file a motion to dismiss each of the petitions filed by Petitioner in
`IPR2013-00609, -00612, -00613, -00615, -00616, and -00618.
`Patent Owner is of the opinion that Petitioner’s petitions filed in each
`proceeding are untimely under 35 U.S.C. § 315(b). Patent Owner requests
`authorization to file a motion to dismiss each petition prior to filing its preliminary
`response. Petitioner does not oppose, provided that Petitioner is authorized to file
`a response to the motions to dismiss.
`During the conference call, the panel explained that a patent owner is
`provided an opportunity to file a preliminary response to a petition. 35 U.S.C. §
`313; 37 C.F.R. § 42.107. A preliminary response may include reasons why no
`inter partes review should be instituted. 35 U.S.C. § 313. The panel further
`explained, that Patent Owner is provided an opportunity to file a preliminary
`response and may address the 35 U.S.C. § 315(b) issue in that context, and,
`therefore, separate briefing in the form of a motion to dismiss is not necessary.
`Based on the facts presented, Patent Owner did not provide a persuasive reason for
`considering the 35 U.S.C. § 315(b) issue in separate briefing in the form of a
`motion to dismiss.
`
`Counsel for Patent Owner explained that Patent Owner does not believe that
`Petitioner has complied with 35 U.S.C. § 312(a)(2) by listing all real parties-in-
`interest. The significance of such an argument was not made clear by counsel for
`
`
`2 A court reporter was present.
`
`2
`
`
`
`
`
`
`Patent Owner in the context of seeking authorization to file the motions to dismiss
`under 35 U.S.C. § 315(b). In any event, Patent Owner, to the extent it believes that
`that is a reason for not instituting an inter partes review may make such arguments
`in its preliminary response.
`
`
`
`
`Order
`
`It is
`
`ORDERED that Patent Owner’s request for authorization to file motions to
`
`dismiss each petition in each of the six cases is denied.
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`For PETITIONER:
`John C. Phillips
`Dorothy P. Whelan
`Fish & Richardson
`Phillips@fr.com
`Whelan@fr.com
`
`
`For PATENT OWNER:
`
`J. Michael Jakes
`Denise W. DeFranco
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`mike.jakes@finnegan.com
`denise.defranco@finnegan.com
`
`
`4
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