`571-272-7822
`
` Paper No. 54
` Date Entered: October 18, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN LIOWN ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`DISNEY ENTERPRISES, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01656
`Patent 8,070,319 B2
`____________
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge,
`J. JOHN LEE and JESSICA C. KAISER, Administrative Patent Judges.
`
`FINK, Vice Chief Administrative Patent Judge.
`
`
`
`
`
`
`TERMINATION
`35 U.S.C. § 315(b) and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`
`IPR2015-01656
`Patent 8,070,319 B2
`
`
`
`
`
`I. INTRODUCTION
`On July 31, 2015, Shenzhen Liown Electronics Co., Ltd.
`
`(“Petitioner”) filed a Petition requesting an inter partes review of claims 1–
`5, 17, and 18 of U.S. Patent No. 8,070,319 B2 (Ex. 1001, “the ’319 patent”).
`Paper 2 (“Pet.”). On February 8, 2016, we instituted trial as to claims 1–5 of
`the ’319 patent on the grounds of unpatentability, under 35 U.S.C. § 102(b)
`and 35 U.S.C. § 103(a), that were alleged in the Petition. Paper 7 (“Inst.
`Dec.”).
`During the trial, Patent Owner1 argued that the petition was time-
`
`barred under 35 U.S.C. § 315(b) because Petitioner was served with a
`complaint alleging infringement of the ’319 patent on December 3, 2012,
`more than one year prior to the filing of the Petition. Paper 21, 29–30. We
`rejected this argument and issued a Final Written Decision concluding that
`Petitioner had demonstrated that claims 1–5 of the ’319 patent are
`unpatentable. Paper 49 (“Final Dec.” or “Decision”).
`
`We were not persuaded by Patent Owner’s time-bar argument because
`the parties agreed that the 2012 infringement complaint was voluntarily
`dismissed without prejudice. Final Dec. 6 (citing Paper 6, 55). We relied on
`the Board’s precedential opinion in Oracle Corp. v. Click-to-Call Techs. LP,
`IPR2013-00312 (PTAB Oct. 30, 2013) (Paper 26) (precedential as to Section
`III.A), which held that “the dismissal of the infringement suit . . . nullifies
`the effect of the service of the complaint and, as a consequence, does not bar
`[Petitioner] from pursuing an inter partes review,” to conclude that the time-
`bar did not apply. Final Dec. 7 (quoting Click-to-Call, slip op. at 17).
`
`
`1 Exclusive Licensee Luminara Worldwide, LLC acted on behalf Patent
`Owner Disney Enterprises, Inc. throughout the proceedings. Paper 5, 1.
`2
`
`
`
`
`
`
`IPR2015-01656
`Patent 8,070,319 B2
`
`
`Patent Owner filed a notice of appeal with the U.S. Court of Appeals
`
`for the Federal Circuit (the “Federal Circuit”). Paper 51.
`II. DISCUSSION
`On August 16, 2018, the Federal Circuit decided Luminara
`
`Worldwide, LLC v. Iancu, No. 2017-1629, -1631, -1633 (Fed. Cir. Aug. 16,
`2018). That same day, the Federal Circuit overruled the Board’s
`precedential opinion in Click-to-Call. There, the Federal Circuit held that
`section 315(b)’s time bar applies to a petitioner served with a complaint
`more than one year before the filing of a petition regardless of whether the
`action was later voluntarily dismissed without prejudice. Click-to-Call
`Technologies, LP v. Ingenio, Inc., No. 15-1242, slip op. at 10 n.3 (Fed. Cir.
`Aug. 16, 2018) (en banc in relevant part); see also Luminara, slip op. at 5.
`Based on this, the Federal Circuit vacated our decision and remanded the
`IPR to us for “dismissal.” Luminara, slip op. at 5.
`
`Accordingly, the IPR is terminated. 35 U.S.C. § 315(b); 37 C.F.R.
`§ 42.72.
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Final Written Decision remains vacated; and
`FURTHER ORDERED that this IPR is terminated.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2015-01656
`Patent 8,070,319 B2
`
`PETITIONER:
`
`Thomas N. Millikan
`Bing Ai
`Joseph P. Reid
`Babak Tehranchi
`Patrick McKeever
`PERKINS COIE LLP,
`TMillikan@perkinscoie.com
`Ai-ptab@perkinscoie.com
`JReid@perkinscoie.com
`BTehranchi@perkinscoie.com
`pmckeever@perkinscoie.com
`
`PATENT OWNER:
`
`Jon E. Wright
`David K.S. Cornwell
`Richard D. Coller III
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`JWRIGHT-PTAB@SKGF.COM
`DAVIDC-PTAB@SKGF.COM
`RCOLLER-PTAB@SKGF.COM
`
`
`
`Ryan S. Dean
`John van Loben Sels
`FISH & TSANG, LLP
`rdean@fishiplaw.com
`jvanlobensels@fishiplaw.com
`patents@fishiplaw.com
`
`Courtland C. Merrill
`Daniel R. Hall
`ANTHONY OSTLUND BAER & LOUWAGIE P.A.
`cmerrill@anthonyostlund.com
`dhall@anthonyostlund.com
`
`
`4
`
`
`
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