`Trials@uspto.gov
`571-272-7822 Entered: December 28, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01264 (Patent 7,945,856 B2)
`Case IPR2015-01319 (Patent 8,082,501 B2)
`Case 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.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`We received from Petitioner an email dated December 26, 2018,
`
`asserting that the parties are unable to reach complete agreement as to the
`contents of joint stipulations to be filed in these cases. We authorized, in our
`Order dated November 29, 2018 (e.g., IPR2015-01264, Paper 48), the
`parties to file joint stipulations directed to the limited issues remaining to be
`resolved in these cases, which are on remand from the Court of Appeals for
`the Federal Circuit. Specifically, we authorized the parties to file joint
`stipulations regarding two categories of information that Petitioner
`characterized as noncontroversial, non-testimonial evidence. Id. at 6–8, 10.
`We also authorized and encouraged the parties to include additional
`stipulations as to factual matters pertaining to the remaining issues in these
`cases, that of collateral estoppel and real-party-in-interest (RPI). Id. at 8.
`
`Petitioner, in its email, seeks our guidance on how to proceed and
`offers to submit to us the proposed but disputed stipulations. Petitioner
`represents that the stipulations include quotations from communications
`exchanged as settlement negotiations between the parties. Petitioner does
`not indicate that the disputed, proposed stipulations pertain to the categories
`of information that were the subject of our authorization.
`
`We received from Patent Owner an email also dated December 26,
`2018, containing a response to Petitioner’s email. Patent Owner states that it
`understands that the parties have reached agreement regarding stipulations
`addressing the two authorized categories of information. Patent Owner
`asserts that the disputed topics are those not raised by Petitioner during the
`conference call with the Board that resulted in the Order mentioned above.
`Patent Owner submits that it would be inappropriate to enter into the record
`
`2
`
`
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`the substance of settlement discussions. Patent Owner further asserts that
`some disputed, proposed stipulations include Petitioner’s characterizations
`of evidence that is in the record or is authorized to be filed in the record.
`
`Having considered the parties’ email submissions, our guidance to
`Petitioner is to file joint stipulations pertaining to topics for which the parties
`are willing to jointly stipulate and as limited to topics that were the subject
`of our authorization in the referenced order. We deny Petitioner’s request to
`submit, and do not authorize the submission or filing of, the disputed draft
`stipulations. We see no need to hold a conference call with the parties
`regarding the disputed stipulations. To the extent that the disputed
`stipulations reflect characterizations of record evidence, Petitioner will have
`the opportunity to present those characterizations via argument in the
`forthcoming briefing.
`
`This order does not alter the provisions set forth in our Order of
`November 29, 2018, as modified by the Order of December 20, 2018 (e.g.,
`IPR2015-01264, Paper 49) (revising the briefing schedule per Petitioner’s
`request).
`
`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)
`
`For PETITIONER:
`Michael T. Rosato
`Matthew A. Argenti
`Andrew Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`asbrown@wsgr.com
`
`
`For PATENT OWNER:
`Wayne M. Helge
`Alan A. Wright
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`whelge@dbjg.com
`awright@dbjg.com
`anoto@dbjg.com
`
`
`
`
`
`
`4
`
`
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