Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Entered: February 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00283
`Patent 6,038,295
`____________
`
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Entered: February 26, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00283
`Patent 6,038,295
`____________
`
`
`
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`
`At the request of counsel for Patent Owner, a telephone conference
`
`was held on February 19, 2015, among respective counsel for Petitioner and
`
`Patent Owner, and Judges Lee, Gerstenblith, and Kokoski. The purpose of
`
`the call was Patent Owner’s request for authorization to file a motion to
`
`stay the proceeding. We have not yet instituted trial. Petitioner seeks
`
`inter partes review of claims 17–24 of U.S. Patent No. 6,038,295 (“the
`
`’295 patent”). Paper 6. The Notice of Filing Date Accorded Petition issued
`
`on December 5, 2014 (Paper 3), and Patent Owner’s Preliminary Response
`
`is due by March 5, 2015. The request is denied.
`
`On February 6, 2015, the United States District Court for the Eastern
`
`District of Virginia, in In re: TLI Communications LLC Patent Litigation,
`
`MDL No. 1:14md2534, granted defendants’ consolidated motion to dismiss
`
`on the grounds that (1) claims 1–26 of the ’295 patent are invalid under
`
`35 U.S.C. § 101, and (2) claims 1 and 25 of the ’295 patent are indefinite
`
`under 35 U.S.C. § 112(f). Patent Owner filed a copy of that decision on
`
`February 19, 2015. Ex. 2001.
`
`Patent Owner advised the Board that the District Court’s decision is
`
`being appealed to the United States Court of Appeals for the Federal Circuit,
`
`and Patent Owner estimates that the Federal Circuit could render a decision
`
`on the appeal by January 2016. Patent Owner argues that the Federal
`
`Circuit’s decision would be dispositive if the Federal Circuit affirms the
`
`District Court’s decision that the claims are invalid under § 101. Patent
`
`Owner requests authorization to file a motion to stay this proceeding until
`
`the Federal Circuit decides the appeal.
`
`Petitioner responds that Patent Owner is requesting an open-ended
`
`stay because it is unknown when the Federal Circuit would decide the
`
`
`
`
`2
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`appeal. Petitioner also notes that there is no overlap in the issues between
`
`the appeal and this proceeding, where Petitioner is challenging claims 17–24
`
`on obviousness grounds that were not part of the District Court’s ruling.
`
`An important consideration in determining whether to stay a
`
`proceeding is that, absent good cause shown, the proceeding must be
`
`completed within one year of institution. 35 U.S.C. § 316(a)(11); 37 C.F.R.
`
`§ 42.100(c). When exercising our discretion, we are mindful that patent trial
`
`statutes and regulations, including those directed to staying a proceeding,
`
`must be construed to secure the just, speedy, and inexpensive resolution of
`
`every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.100(c). As the
`
`moving party, Patent Owner has the burden of proof to establish that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c).
`
`A stay generally is undesirable because it lengthens the pendency of
`
`the proceeding, as “[a]ny modification of times will take any applicable
`
`statutory pendency goals into account.” 37 C.F.R. § 42.5(c)(1). Even
`
`though a preliminary response has not been filed and a trial has not been
`
`instituted, a stay would delay the institution of trial if one is to be instituted,
`
`and, thus, also delay the completion of the overall proceeding. The
`
`preliminary proceeding, occurring prior to the institution of trial, is a part of
`
`the overall proceeding. A stay for an indefinite period entered during the
`
`preliminary proceeding would affect the applicable pendency goals should
`
`trial be instituted, and would contravene our mandate to secure the just,
`
`speedy, and inexpensive resolution of this proceeding. See 35 U.S.C.
`
`§ 316(b); 37 C.F.R. § 42.100(c).
`
`We agree with Petitioner that there is no guarantee that the appeal will
`
`be decided by January 2016, and Patent Owner acknowledges that this is just
`
`
`
`
`3
`
`
`
`IPR2015-00283
`Patent 6,038,295
`
`an estimate. Furthermore, there is no overlap between the obviousness
`
`grounds asserted in the Petition and the issues in the appeal.
`
`Under the circumstances, Patent Owner has failed to persuade us that
`
`there is sufficient evidence of good cause to justify authorizing a motion to
`
`stay the proceeding.
`
`It is therefore
`
`ORDERED that Patent Owner’s request for authorization to file a
`
`motion to stay this proceeding is denied.
`
`
`
`
`
`
`
`PETITIONER:
`
`Andrew V. Trask
`David M. Krinsky
`WILLIAMS & CONNOLLY LLP
`atrask@wc.com
`dkrinsky@wc.com
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Michael A. Davitz
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`michael.davitz@ascendalaw.com
`
`
`
`
`
`
`
`
`4
`
`
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