Trials@uspto.gov Paper 24
`571-272-7822 Entered: April 3, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ARTSANA USA, INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01053
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
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`
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`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
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`571-272-7822 Entered: April 3, 2015
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARTSANA USA, INC.,
`Petitioner,
`
`v.
`
`KOLCRAFT ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01053
`Patent 8,388,501 B2
`____________
`
`
`Before JAMES T. MOORE, HYUN J. JUNG, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
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`IPR2014-01053
`Patent 8,388,501 B2
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`I. INTRODUCTION
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`Artsana USA, Inc. (“Petitioner”) filed a Corrected Petition (Paper 5,
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`“Pet.”) seeking to institute an inter partes review of claims 1–20 of U.S.
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`Patent No. 8,388,501 B2 (“the ’501 patent”) pursuant to 35 U.S.C. §§ 311–
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`319. Kolcraft Enterprises, Inc. (“Patent Owner”) filed a Preliminary
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`Response (Paper 11, “Prelim. Resp.”). The Board instituted review of
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`claims 1–5 and 8 (Paper 14, “Dec.”). Petitioner sought rehearing of that
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`decision. Paper 16 (“Req. Reh’g”). We granted rehearing in part but
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`declined to modify the outcome of the decision. Paper 22.
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`On the same date as our decision on rehearing, Patent Owner
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`requested adverse judgment as to the claims which an inter partes review
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`had been instituted on. Paper 23.
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`We conducted a conference call on March 16, 2015 between the
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`parties. Patent Owner seeks a delay in granting the request for adverse
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`judgment until a decision on institution is rendered in the Petition filed and
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`designated as IPR2015-00582 (Paper 1 therein) and its associated motion for
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`joinder (Paper 3 therein). It is not in dispute that the Petitioner’s later
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`Petition would otherwise be time barred if it could not be joined to a
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`preexisting inter partes review.
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`We have considered the Request for Adverse Judgment, and
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`Petitioner’s request for delay, and hereby grant the Patent Owner’s request
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`for adverse judgment, without the requested delay.
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`2
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`IPR2014-01053
`Patent 8,388,501 B2
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`II.
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`RELEVANT RULES
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`The Board may terminate a trial without rendering a final
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`written decision, where appropriate, including where the trial is consolidated
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`with another proceeding or pursuant to a joint request under 35 U.S.C.
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`317(a) or 327(a). 37 C.F.R. § 42.72.
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`A party may request judgment against itself at any time during a
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`proceeding. 37 C.F.R. § 42.73(b).
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`This part shall be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).
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`III. ANALYSIS
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`A. Request for Adverse Judgment
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`Patent Owner’s Request for Adverse Judgment (Paper 23) requests
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`adverse judgment, and requests that the Board cancel claims 1–5 and 8 of
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`the ’501 patent. Paper 23, 1.
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`
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`On its face, the request is sufficient to grant relief to the Patent
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`Owner. The question we face presently is: why should we not grant the
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`relief in a timely fashion?
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`
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`During the conference call, Petitioner did not oppose the ultimate
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`grant of the petition for adverse judgment, but requested that we delay its
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`grant. According to counsel for the Petitioner, the procedural posture of
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`Cases IPR2014-01053 and IPR2015-00582 should be considered along with
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`the District Court litigation and the intent of the America Invents Act statute
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`to provide an alternative to litigation.
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`3
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`IPR2014-01053
`Patent 8,388,501 B2
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`As noted above, if there is no ongoing inter partes review for the
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`IPR2015-00582 petition to be joined to, regardless of whether the petition
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`has merit, the petition is statutorily barred as it was filed January 20, 2015,
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`which is more than one year after the date of service of a complaint upon the
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`Petitioner. Petitioner was served a complaint on July 11, 2013. IPR2015-
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`00582, Paper 1, and Paper 3, page 1.
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`Petitioner urged during the conference call that there would be
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`prejudice in Petitioner’s being required to go back into litigation when the
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`second filed inter partes review petition could resolve the litigation.
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`According to the Petitioner, the fact that the Patent Owner canceled
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`four claims speaks to the strength of the second petition.
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`On the other hand, the Patent Owner observed that the stay in the
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`copending litigation had already been lifted, and the filing of multiple inter
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`partes review proceedings was solely to delay the district court proceedings.
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`
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`We have looked at the status of Kolcraft Enterprises, Inc. v. Artsana
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`USA, Inc., No. 1:13-cv-04863 (N.D. Ill.) on PACER and observe that the
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`stay of the underlying proceeding was to remain in place pending the
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`decision on reconsideration. Docket Entry 91, March 5, 2015. Accordingly,
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`the Patent Owner is correct that the District Court proceeding has resumed,
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`but it is also true that no significant activity beyond the filing of a motion
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`relating to a discovery plan has occurred. Docket Entry 92, March 13, 2015.
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`The burden to show why the decision on the request for adverse
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`judgment should be delayed into at least mid-May 2015 (which is when a
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`Patent Owner’s response could latest be filed) is upon the Petitioner. 37
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`C.F.R. § 42.20(c). Weighing in on the Petitioner’s side is the procedural
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`problem with the later Petition having nothing to join to and therefore being
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`4
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`IPR2014-01053
`Patent 8,388,501 B2
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`time barred. We recognize that problem. We also are aware of their being
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`in litigation in District Court again.
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`On the other hand, the Petitioner already has had one opportunity at
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`an inter partes review, and did not succeed by a failure of proof. There is no
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`guarantee that the second petition would succeed on the merits. There also
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`is no guarantee that the District Court would stay the proceeding a second
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`time. The first stay was almost 6 months long - granted September 15, 2014
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`(Docket Entry 81) and lifted March 6, 2015. The Patent Owner takes the
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`position that these proceedings are filed solely as a delay tactic.
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`Also weighing against the Petitioner is our instruction to secure the
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`just, speedy, and inexpensive resolution of each proceeding. It is
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`undoubtedly true that this proceeding would be more speedily resolved by
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`granting the request. It is also true that there is a substantial impact on the
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`later filed proceeding. However, Petitioner is not without opportunity to
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`defend in the District Court.
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`While there are factors supporting both the grant and denial of the
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`request to delay the entry of adverse judgment, it is the opinion of this panel
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`that the Petitioner has not shown that the weight of the factors in this
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`particular case favors the grant of the request to delay the decision on the
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`Request for Adverse Judgment.
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`IV. CONCLUSION
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`Accordingly, the Request for Adverse Judgment is granted.
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`5
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`IPR2014-01053
`Patent 8,388,501 B2
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`For the reasons given, it is
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`V. ORDER
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`ORDERED that Patent Owner’s request for adverse judgment under
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`37 C.F.R. § 42.73(b) with respect to claims 1–5 and 8 of U.S. Patent No.
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`8,388,501 B2 is GRANTED; and,
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`ORDERED that, at the request of the Patent Owner, judgment is
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`entered herein against Patent Owner with respect to claims 1–5 and 8 of U.S.
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`Patent No. 8,388,501 B2. Claims 1–5 and 8 of U.S. Patent No. 8,388,501
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`B2 are not patentable and a certificate canceling them shall issue in due
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`course.
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`6
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`IPR2014-01053
`Patent 8,388,501 B2
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`PETITIONER:
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`Anthony Volpe
`avolpe@vklaw.com
`
`Ryan O’Donnell
`rodonnell@vklaw.com
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`
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`PATENT OWNER:
`
`Anthony Dowell
`aedowell@niro-mcandrews.com
`
`Raymond Niro Jr.
`rnirojr@niro-mcandrews.com
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`Brian Lynch
`blynch@niro-mcandrews.com
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`7
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