`571-272-7822
`
`Paper No. 8
` Entered: February 4, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NINTENDO OF AMERICA, INC. and NINTENDO CO., LTD.,
`Petitioner,
`
`v.
`
`BABBAGE HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00568
`Patent 5,561,811
`____________
`
`Before MEREDITH C. PETRAVICK, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`Case IPR2015-00568
`Patent 5,561,811
`
`
`On Wednesday, January 21, 2015, counsel for Petitioner requested a
`
`conference call to discuss Petitioner’s Motion for Joinder (Paper 4) in which
`
`Petitioner requests joinder of this proceeding with IPR2014-00954. A
`
`conference call was held on February 3, 2015, between respective counsel
`
`for the parties and Judges Petravick, Deshpande, and Clements.
`
`Counsel for Petitioner explained that it believes the Motion for
`
`Joinder should be granted because its Petition and Motion were filed within
`
`one month of institution of IPR2014-00954, the Petition asserts the same
`
`ground of unpatentability that was instituted in IPR2014-00954, the Petition
`
`presents the same arguments and evidence as submitted in IPR2014-00954,
`
`including the exact same expert declaration, and Petitioner in the instant
`
`proceeding wants to be able to continue as a party to the proceeding in the
`
`event that all of the real parties-in-interest in IPR2014-00954 reach
`
`settlement.
`
`Patent Owner opposes Petitioner’s Motion for Joinder. According to
`
`counsel for Patent Owner, the parties in IPR2014-00954 have settled in
`
`principle the related district court litigation, have filed motions to dismiss,
`
`and plan to file a motion to terminate IPR2014-00954. Counsel for Patent
`
`Owner represented that that settlement was reached prior to the filing of the
`
`Petition and Motion for Joinder in the instant proceeding. Counsel for
`
`Patent Owner acknowledged that a Motion to Terminate had not yet been
`
`filed in IPR2014-00954, but argued that once it was filed and granted, there
`
`would no longer be a proceeding to join and that, in the absence of joinder,
`
`the Petition in the instant proceeding would be barred under 35 U.S.C.
`
`§ 315(b).
`
`
`
`2
`
`
`
`Case IPR2015-00568
`Patent 5,561,811
`
`
`We explained that, until a Motion to Terminate is filed in IPR2014-
`
`00954, we must proceed as if the instant proceeding and IPR2014-00954
`
`may be joined. To that end, we discussed expediting the Patent Owner’s
`
`Preliminary Response in the instant proceeding.
`
`Counsel for Patent Owner indicated that it desired to file a Patent
`
`Owner Preliminary Response, and could do so on an expedited basis.
`
`Counsel for Patent Owner suggested that the Patent Owner Preliminary
`
`Response be due on February 20, 2015. Counsel for Petitioner did not
`
`object. Accordingly, the Patent Owner Preliminary Response is due
`
`February 20, 2015.
`
`Counsel for Patent Owner also indicated that it desired to file an
`
`Opposition to Petitioner’s Motion for Joinder, and that it planned to do so
`
`within thirty days of the filing of the Motion for Joinder, as provided for in
`
`37 C.F.R. § 42.25. Counsel for Petitioner did not object. Accordingly,
`
`Patent Owner’s opposition is due February 17, 2015.
`
`
`
`It is, therefore,
`
`ORDERED that Patent Owner is authorized to file an Opposition to
`
`the Motion for Joinder no later than February 17, 2015; and
`
`FURTHER ORDERED that Patent Owner’s Preliminary Response is
`
`due February 20, 2015.
`
`
`
`3
`
`
`
`Case IPR2015-00568
`Patent 5,561,811
`
`PETITIONER:
`
`Joseph S. Presta
`Robert W. Faris
`NIXON & VANDERHYE, P.C.
`jsp@nixonvan.com
`rwf@nixonvan.com
`
`PATENT OWNER:
`
`David H. Judson
`LAW OFFICE OF DAVID H. JUDSON
`mail@davidjudson.com
`
`Anthony M. Garza
`CHARHON CALLAHAN ROBSON & GARZA
`agarza@ccrglaw.com
`
`
`
`4
`
`
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