Trials@uspto.gov
`571-272-7822
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` Paper 13
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` Entered: December 17, 2015
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`v.
`BLUE BELT TECHNOLOGIES, INC. and
`CARNEGIE MELLON UNIVERSITY
`Exclusive Licensee and Patent Owner.
`____________
`
`Case IPR2015-00630
`Patent 6,205,411 B1
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
` A
`
` conference call was held on December 16, 2015, involving respective
`counsel for Mako Surgical Corporation and Blue Belt Technologies, Inc., and
`Judges Medley, Turner, and Fink. Counsel for Carnegie Mellon University
`(“CMU”) was not present on the call. Counsel for named Patent Owner (“Blue
`Belt”) initiated the call to seek authorization to file a Motion to Terminate. We
`
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`571-272-7822
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` Paper 13
`
`
`
` Entered: December 17, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAKO SURGICAL CORP.,
`Petitioner,
`v.
`BLUE BELT TECHNOLOGIES, INC. and
`CARNEGIE MELLON UNIVERSITY
`Exclusive Licensee and Patent Owner.
`____________
`
`Case IPR2015-00630
`Patent 6,205,411 B1
`____________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
` A
`
` conference call was held on December 16, 2015, involving respective
`counsel for Mako Surgical Corporation and Blue Belt Technologies, Inc., and
`Judges Medley, Turner, and Fink. Counsel for Carnegie Mellon University
`(“CMU”) was not present on the call. Counsel for named Patent Owner (“Blue
`Belt”) initiated the call to seek authorization to file a Motion to Terminate. We
`
`
`
`IPR2015-00630
`Patent 6,205,411 B1
`
`provided the panel’s decision on the conference call that no motion was
`authorized. This order memorializes the discussion and decision thereon, and
`provides specific requirements detailed herein.
`Blue Belt sought authorization to file a motion to terminate because the
`Petition fails to name the true patent owner as a real party in interest. Blue Belt
`argued that because all real parties-in-interest are not named in this proceeding,
`it should be terminated, citing Corning Optical Comm’ns RF, LLC v. PPC
`Broadband, Inc., Case IPR2014-00440, slip op. at 23–25 (PTAB Aug. 18,
`2015) (Paper 68) and 35 U.S.C. § 312 (a)(2).
`During the conference call, we pointed out that the cited case addressed
`real parties-in-interest for petitioners and did not address real parties-in-interest
`for patent owners. Blue Belt acknowledged that it did not know of any case
`where the Board has dismissed or terminated a proceeding for failure of a
`petitioner to correctly list the correct patent owner’s real party-in-interest.
`Moreover, we disagree with Blue Belt that 35 U.S.C. § 312 (a)(2)
`requires Petitioner to identify all real parties in interest for the Patent Owner.
`That section of the statute requires Petitioner to name all of its real parties-in-
`interest, but does not require Petitioner to name Patent Owner’s real parties-in-
`interest. See also 37 CFR § 42.8(a) (requiring a petitioner to identify
`petitioner’s real parties-in-interest in the petition, and patent owner to identify
`patent owner’s real parties-in-interest in mandatory notices). We find Blue
`Belt’s proffered reading of the statute to require Petitioner to name all of Patent
`Owner’s real parties-in-interest to be unreasonable. Patent Owner is in the best
`position to inform the Board and Petitioner who is a real party in interest for
`
`2
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`IPR2015-00630
`Patent 6,205,411 B1
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`Patent Owner, just as Petitioner is in the best position to inform the Board and
`Patent Owner who is a real party-in-interest for Petitioner.
`We referred Blue Belt to Askeladden LLC v. McGhie, Case IPR2015-
`00122 et al., slip op. at 2–3 (PTAB Dec. 16, 2014) (Paper 9), where the panel in
`that proceeding determined that a patent owner’s mandatory notices clarified
`the record and, therefore, denied authorization for that patent owner to file
`motions to dismiss the petitions for failing to name the correct patent owner’s
`real party-in-interest. We are persuaded that Blue Belt’s filing of mandatory
`notice (Paper 5), indicating that Blue Belt is the exclusive licensee of U.S.
`Patent No. 6,205,411, and that CMU is the owner of that patent, is sufficient to
`clarify the record in this proceeding.
`Additionally, an inter partes review is initiated against claims of a patent,
`determining unpatentability of claims upon institution, independent of what
`party has ownership of the patent, even if that ownership changes over the
`course of the proceeding. Indeed, even if the named parties settle, a final
`written decision may still be issued determining the patentability of claims, per
`35 U.S.C. § 317(a). For all of these reasons, Blue Belt is not authorized to file a
`motion to terminate.
`A separate issue raised during the call was whether a power of attorney
`for Patrick J. McElhinny or Mark. G. Knedeisen, said to be representing CMU,
`was filed in this proceeding. Paper 5, 2. As explained on the call, the filing of
`a power of attorney for those individuals should be made. 37 C.F.R. § 42.10.
`During the call, Blue Belt indicated that it did not know whether
`Carnegie Mellon University was willing to participate in this proceeding. A
`
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`IPR2015-00630
`Patent 6,205,411 B1
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`review of the papers in this proceeding, however, indicates that CMU has
`participated in this proceeding and has acted as a party to this proceeding.
`CMU is represented by counsel and has authorized the filing of a Patent Owner
`Response (Paper 11). CMU also authorized the filing of a Motion to Amend
`(Paper 12), wherein CMU indicates that it “hereby joins in a motion to amend
`U.S. Patent No. 6,205,411.” Paper 12, 1. Further, as noted by Petitioner’s
`counsel, CMU has acted or has had the ability to act during the elapsed portion
`of the trial. Therefore, based on the present record, we are persuaded that CMU
`is a party to this proceeding, as the patent owner, and should be named as such.
`Lastly, although CMU has had minimal participation in this proceeding, CMU
`nonetheless would be bound by any judgment adverse to Blue Belt. See, e.g.,
`37 C.F.R. § 42.73(d)(3).
`In order to make the record in this proceeding clear, we request that
`CMU provide power of attorney for the attorneys representing it in this
`proceeding.
`
`It is
`ORDERED that Patent Owner’s request to file a motion to terminate is
`denied;
`FURTHER ORDERED that Carnegie Mellon University is named as the
`patent owner in this proceeding and is a party to the proceeding such that it
`would be bound by any judgment adverse to Blue Belt. See, e.g., 37 C.F.R.
`§ 42.73(d)(3); and
`
`4
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`IPR2015-00630
`Patent 6,205,411 B1
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`FURTHER ORDERED that Carnegie Mellon University shall, no later
`than December 22, 2015, file a power of attorney for the counsel indicated as
`representing Carnegie Mellon University.
`
`
`
`5
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`
`
`IPR2015-00630
`Patent 6,205,411 B1
`
`PETITIONER:
`Matthew I. Kreeger
`Walter Wu
`MORRISON & FOESTER LLP
`mkreeger@mofo.com
`wwu@mofo.com
`
`
`
`PATENT OWNER / EXCLUSIVE LICENSEE:
`Brian Buroker
`Stuart Rosenberg
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`srosenberg@gibsondunn.com
`
`Gregory Stark
`SCHWEGMAN LUNDBERG WOESSNER P.A.
`gstark@slwip.com
`
`Patrick McElhinny
`Mark Knedeisen
`K&L GATES LLP
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.com
`
`
`6
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