`Trials@uspto.gov
`571-272-7822 Date: January 14, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`____________
`
`
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`NOTICE
`Termination, Vacating Institutions, and Dismissing Proceedings on Remand
`35 U.S.C. § 314
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`
`I. NOTICE OF TERMINATION
`Today, we issued a non-public version of a Termination vacating
`
`institutions and dismissing proceedings on remand in the above-captioned
`cases. For the reasons discussed in the Termination (a public version of
`which will issue in due course), we determine the following: 1) Patent
`Owner is not estopped from arguing the real-party-in-interest issue on
`remand; and 2) Petitioner has not met its burden of persuasion to show that
`its Petitions are not time-barred under § 315(b) based on a complaint served
`on an alleged real party in interest more than a year earlier. Accordingly,
`pursuant to 35 U.S.C. §§ 314 and 315(b) and 37 C.F.R. §§ 42.71(a)
`and 42.72, we dismiss the Petitions in the above-captioned cases, vacate our
`Decisions to Institute, and terminate the inter partes reviews without
`rendering final written decisions under 35 U.S.C. § 318(a).
`
`II. ORDER CONCERNING THE PUBLIC AVAILABILITY OF THE
`TERMINATION
`The Termination has been entered as a non-public version because it
`
`may refer to information that is the subject of a Motion to Seal. See
`IPR2015-01264, Paper 57 (order granting Patent Owner’s unopposed
`Motion to Seal). No later than ten (10) business days after entry of the
`Termination, the parties may identify which portions of the Termination, if
`any, should be redacted for a public version. To that end, the parties may
`make such an identification by jointly submitting via email a single PDF
`document containing all proposed redactions. The parties shall not file their
`proposed redactions in the dockets of these proceedings.
`
`2
`
`
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`If the parties agree that the Termination may be made publicly
`
`available without any redactions, the parties may notify the Board via email
`stating such within the same time frame. In the absence of a communication
`from the parties about any alleged confidentiality of the Termination during
`the ten-day period set forth above, the Board will make the Termination
`publicly available as originally entered.
`
`It is so ORDERED.
`
`
`
`3
`
`
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`
`PETITIONER
`
`Michael T. Rosato
`Matthew A. Argenti
`Andrew Brown
`Jad Mills
`WILSON SONSINI GOODRICH& ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`asbrown@wsgr.com
`jmills@wsgr.com
`
`PATENT OWNER:
`
`Wayne M. Helge
`Michael R. Casey
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`whelge@dbjg.com
`mcasey@dbjg.com
`djackson@dbjg.com
`anoto@davidsonberquist.com
`
`
`
`
`4
`
`
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