UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
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`v.
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`D’AGOSTINO, JOHN
`Patent Owner
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`Case IPR2014-00543
`Patent 8,036,988
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`________________
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`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
`MOTION TO STAY EX PARTE REEXAMINATION PROCEEDING 90/012517
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`
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`MASTERCARD INTERNATIONAL INCORPORATED
`Petitioner
`
`v.
`
`D’AGOSTINO, JOHN
`Patent Owner
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`________________
`
`
`
`Case IPR2014-00543
`Patent 8,036,988
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`________________
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`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
`MOTION TO STAY EX PARTE REEXAMINATION PROCEEDING 90/012517
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`1. Introduction
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`Patent Owner respectfully requests that the Board deny Petitioner’s motion
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`to stay Ex Parte Reexamination Proceeding 90/012,517 (“the Reexamination”) of
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`U.S. Patent 8,036,988 (“the ‘988 patent”). The Board should deny Petitioner’s
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`motion because (1) staying the Reexamination at its current progress would be
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`directly opposite of the Board’s policy; (2) denying the stay would not prejudice
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`Petitioner; and (3) Patent Owner would be highly prejudiced by an eleventh hour
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`stay that would only serve to stop publication of a Reexamination Certificate.
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`2. Argument
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`A. Staying the Reexamination at its current progress would be directly
`opposite of the Board’s policy.
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`The Board’s underlying policy to stay a reexamination running parallel with
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`an inter partes review is (1) to prevent duplicate efforts by the Patent Office, (2) to
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`simplify issues in the reexamination proceeding, (3) to avoid complicating the inter
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`partes review by reexamination claim amendments, and (4) to prevent inconsistent
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`results between the two proceedings. IPR2013-00033, paper 15, at 2-3 (Nov. 6,
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`2013); IPR2013-00110, paper 10, at 2-3 (May 13, 2013); IPR2013-00122, paper
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`15, at 2 (Apr. 2, 2013). Absent these factors, the Board will not ordinarily stay a
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`reexamination because reexaminations are conducted with special dispatch. Id.; 35
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`U.S.C. § 305.
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`1
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`Here, the first three factors simply do not exist because the Reexamination
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`has been terminated. Staying the Reexamination at its late stage will not prevent
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`duplicate efforts because the only step remaining in the Reexamination is
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`publication of the Reexamination Certificate. Further, since the Reexamination has
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`been closed, there cannot be any reexamination claim amendments, and whatever
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`issues that might have been simplified by the instant inter partes review are now
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`moot.
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`Turning to the fourth factor, in Toshiba Corporation v. Intellectual Ventures
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`II LLC,1 the Board addressed the issue of inconsistencies between an inter partes
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`review and a reexamination where a Notice of Intent to Issue a Reexamination
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`Certificate (“NIRC”) was issued. In Toshiba, the Petitioner requested authorization
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`to file a motion to stay the reexamination after the CRU had issued a NIRC and
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`argued the stay was necessary to prevent inconsistencies between the two
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`proceedings. Id. at 2. Unpersuaded by the Petitioner, the Board denied the
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`Petitioner’s request because “[t]he results of the Examiner’s decision [were]
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`already known and public.” Id at 3. The Board concluded “…granting [the] stay
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`would not change the publicly disclosed Examiner’s decision and any potential
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`inconsistency with a decision on institution in the instant proceeding would still be
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`evident.” Id.
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`1 IPR2014-00317, paper 10 (May 6, 2014).
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`2
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`Here, similar to Toshiba, the CRU has issued a NIRC and the Examiner’s
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`results are known and public. And, as the Board concluded in Toshiba, any
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`inconsistencies between the two proceedings here are already evident and this
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`would not be changed by staying the Reexamination.
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`B.
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` Denying the stay would not prejudice Petitioner.
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`
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`Petitioner would not be prejudiced by denying its request to stay the
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`Reexamination because Petitioner has a pending validity challenge on all claims of
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`the ‘988 patent in the instant inter partes review. Petitioner urges this Board to
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`accept that it will be prejudiced by publication of a Reexamination Certificate
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`because Petitioner is unable to appeal the CRU’s issuance of the NIRC and because
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`of inconsistencies between the instant inter partes review and the Reexamination.
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`Petitioner Mot. at 3. Petitioner further argues that the NIRC would not have issued
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`if the CRU had the benefit of the Board’s Decision to institute inter partes review.
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`Id. The Board should not accept these arguments.
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`
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`First, the Reexamination was initiated by Petitioner. See Ex. 2002, Civil
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`Action No. 1:13-cv-00738 (D. Del.), Def.'s Answer to Am. Compl. & Countercl.,
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`¶47, at p. 8. And Petitioner took the risk of not being able to appeal a final decision
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`when it filed the Reexamination. The Board should not allow Petitioner to use this
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`inter partes review as a means to circumvent that risk and stop the publication of
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`the Reexamination Certificate because the results are unfavorable to Petitioner.
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`3
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`Second, as discussed above, the Board has held that inconsistencies between
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`a NIRC in a reexamination and a decision on institution in an inter partes review is
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`not sufficient cause to stay the reexamination to stop the Office from publishing a
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`Reexamination Certificate. IPR2014-00317, paper 10, at 3.
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`Finally, it is pure speculation that the CRU did not consider the Board’s
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`Decision to institute inter partes review before issuing the NIRC. This is especially
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`true since the Patent Owner notified the CRU of the related inter partes review
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`when he filed his Appeal Brief and the NIRC was issued after the CRU considered
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`that brief. Ex. 2003, Appeal Brief, at 4.
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`C. Patent Owner would be highly prejudiced by an eleventh hour stay that
`would only serve to stop the Office from publishing a Reexamination
`Certificate.
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`For the past two years Patent Owner has expended considerable resources in
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`prosecuting the Reexamination to conclusion. Contrary to Petitioner’s portrayal of
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`the Reexamination, the CRU has thoroughly reexamined the ‘988 patent including
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`the originally assigned patent examiner and conferees denying the initial
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`reexamination request, the CRU Director ordering reexamination, two thorough
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`office actions issued by a second patent examiner and new conferees, and an
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`appeal brief. Finally, after considering the extensive appeal brief, the second patent
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`examiner and the new conferees withdrew all of the rejections and issued the
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`NIRC. See Ex. 1021.
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`4
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`Staying the Reexamination now, when in the final stages of the proceeding,
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`for the sole purpose of preventing the Office from publishing a Reexamination
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`Certificate would not only be against the “special dispatch” requirements and
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`Board policy, it would also be entirely inequitable and a great injustice.
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`Moreover, while the Patent Owner once requested the Board’s authorization
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`to stay the Reexamination, this request was made at a time when further efforts
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`were required in the Reexamination. The NIRC has eliminated all of the issues
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`upon which the Patent Owner based his previous request. And the Patent Owner is
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`entitled to change his position since the NIRC has now rendered his prior request
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`moot.
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`3. Conclusion
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`In summary, staying the Reexamination would only serve to stop publication
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`of a Reexamination Certificate. A stay would not prevent the Office from
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`duplicating efforts, would not simplify issues in the Reexamination, or prevent
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`reexamination claim amendments. Moreover, the Board has held that
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`inconsistencies between a NIRC issued in reexamination and a pending inter partes
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`review is not sufficient cause to stay the reexamination. Finally, Patent Owner
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`would be highly prejudiced by staying the Reexamination after two years of
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`prosecuting the Reexamination to conclusion.
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`5
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`Respectfully Submitted,
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`
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`By: /s/ Stephen Lewellyn
`Stephen J. Lewellyn (Reg. No. 51,942)
`Brittany J Maxey (Reg. No. 57,621)
`Maxey Law Offices, PLLC
`100 Second Avenue South
`Suite 401 North Tower
`St. Petersburg, Florida 33701
`Telephone: 727-230-4949
`Facsimile: 727-230-4827
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`Agent and Attorney for Patent Owner,
`John D’Agostino
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`
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`September 26, 2014
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 26th day of September 2014, a copy of this
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`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
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`MOTION TO STAY EX PARTE REEXAMINATION PROCEEDING
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`90/012517, including all exhibits, has been served in its entirety by Email, on the
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`following counsel of record for MasterCard:
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`
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`Robert Scheinfeld, Lead Counsel
`Baker Botts LLP
`30 Rockefeller Plaza, 44th Floor
`New York, New York 10112-4498
`Service Email: robert.scheinfeld@bakerbotts.com
`
`Eliot William, Back-up Counsel
`Baker Botts LLP
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304-1007
`Service Email: eliot.williams@bakerbotts.com
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`
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`Dated: September 26, 2014
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`Respectfully submitted,
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`/s/Stephen Lewellyn
`Stephen J. Lewellyn
`Reg. No. 51,942
`Agent for Patent Owner
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