`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 9
`Filed: December 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC., T-MOBILE USA, INC.,
`TELECOMMUNICATION SYSTEMS, INC., ERICSSON INC., and
`TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioners,
`
`v.
`
`TRACBEAM, LLC
`Patent Owner.
`____________
`
`IPR2015-01681 (Patent 7,764,231)1
`IPR2015-01687 (Patent 7,764,231)
`IPR2015-01708 (Patent 7,525,484)
`IPR2015-01711 (Patent 7,525,484)
`IPR2015-01712 (Patent 7,298,327)
`IPR2015-01713 (Patent 8,032,153)
`____________
`
`
`
`Before KEVIN F. TURNER, RICHARD E. RICE, DAVID C. MCKONE,
`JAMES A. TARTAL, BARBARA A. PARVIS, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`ORDER
`Joint Motions to Limit Petition
`37 C.F.R. § 42.71
`
`
`1 The parties are not authorized to use this case caption, or to file
`consolidated papers.
`
`
`
`
`
`
`
`IPR2015-01681, IPR2015-01687, IPR2015-01708, IPR2015-01711,
`IPR2015-01712, and IPR2015-01713
`Patents 7,298,327, 7,525,484, 7,764,231, and 8,032,153
`
`
`On November 24, 2015, the parties filed a Joint Motion to Limit
`Petition (“Motions”) in each of the above cited proceedings, per the attached
`APPENDIX, seeking to limit the claims challenged in these proceedings
`pursuant to an agreement by Patent Owner not to assert certain claims
`against the Petitioners in a concurrent pending action or any future action.
`The parties also filed a Joint Submission of Narrowing Agreement (e.g.,
`IPR2015-01712, Paper 8), with joint requests to treat as confidential the
`submitted Narrowing Agreement (e.g., IPR2015-01712, Ex. 2001), in each
`proceeding.
`As provided in the APPENDIX, the Petition in each proceeding
`presents challenges as to the “Original Claims,” and the current motions
`propose to limit the challenged claims to the “Limited Claims” in each
`proceeding, i.e., removing specific claims from each. A copy of the
`Narrowing Agreement was provided in each proceeding, along with joint
`requests to treat that agreement as confidential. See APPENDIX.
`As noted by the parties in the Motions, these proceedings are still in
`their preliminary stages, and decisions have not been made yet whether to
`institute trials. Motions 3–4. In addition, limiting the proceedings facilitates
`the Board’s goal of resolving inter partes reviews in a just, speedy, and
`inexpensive manner. See 37 C.F.R. § 42.1(b).
`Accordingly, it is
`ORDERED that the parties’ Joint Motions to Limit the Petition in
`these proceedings are GRANTED; and
`FURTHER ORDERED that the Petition in in each of these
`proceedings is limited as follows:
`IPR2015-01681, limited to claims 25 and 82;
`2
`
`
`
`
`
`IPR2015-01681, IPR2015-01687, IPR2015-01708, IPR2015-01711,
`IPR2015-01712, and IPR2015-01713
`Patents 7,298,327, 7,525,484, 7,764,231, and 8,032,153
`
`
`IPR2015-01687, limited to claims 17, 20, and 25;
`IPR2015-01708, limited to claims 1, 25, and 51;
`IPR2015-01711, limited to claim 27;
`IPR2015-01712, limited to claims 1, 2, 44, and 60;
`IPR2015-01713, limited to claims 1, 3, and 15; and
`FURTHER ORDERED that the Narrowing Agreement, with Exhibit
`numbers listed in the APPENDIX, be treated as business confidential
`information, be designated “Board Only,” and be kept separate from the files
`of the involved patents.
`
`
`
`3
`
`
`
`IPR2015-01681, IPR2015-01687, IPR2015-01708, IPR2015-01711,
`IPR2015-01712, and IPR2015-01713
`Patents 7,298,327, 7,525,484, 7,764,231, and 8,032,153
`
`PETITIONER:
`Brian W. Oaks
`Douglas M. Kubehl
`Chad C. Walters
`Ross G. Culpepper
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`doug.kubehl@bakerbotts.com
`chad.walters@bakerbotts.com
`ross.culpepper@bakerbotts.com
`
`
`
`PATENT OWNER:
`Sean Luner
`DOVEL AND LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP.
`ssereboff@.socalip.com
`
`
`
`
`4
`
`
`
`IPR2015-01681, IPR2015-01687, IPR2015-01708, IPR2015-01711, IPR2015-01712, and IPR2015-01713
`Patents 7,298,327, 7,525,484, 7,764,231, and 8,032,153
`APPENDIX
`
`
`PATENT
`NUMBER
`
`7,764,231
`7,764,231
`7,525,484
`7,525,484
`7,298,327
`8,032.153
`
`CASE NO.
`
`IPR2015-01681
`IPR2015-01687
`IPR2015-01708
`IPR2015-01711
`IPR2015-01712
`IPR2015-01713
`
`
`
`
`
`LIMITED
`CLAIMS
`
`25 and 82
`17, 20, and 25
`1, 25, and 51
`27
`1, 2, 44, and 60
`1, 3, and 15
`
`NARROWING
`AGREEMENT
`
`Ex. 2008
`Ex. 2004
`Ex. 2003
`Ex. 2001
`Ex. 2001
`Ex. 2001
`
`PAPER ORIGINAL CLAIMS
`
`9
`7
`7
`6
`7
`7
`
`25, 26, 36, and 82
`17, 20, 25, and 26
`1, 2, 6, 24, 25, 51, 71, and 72
`27, 39, and 62
`1, 2, 3, 5, 17, 18, 28, 44, 60, 61, and 76
`1, 3, 15, 16, 20, 21, 23, 27, and 29
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
