Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 23
`Entered: December 4, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`
`Case IPR2015-01750
`Patent 8,484,111 B2
`
`Case IPR2015-01751
`Case IPR2015-01752
`Patent 7,356,482 B21
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MITCHELL G. WEATHERLY, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`CHAGNON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`Authorizing Motion for Sanctions
`37 C.F.R. § 42.12
`Authorizing Motion to Withdraw Counsel
`37 C.F.R. § 42.10(e)
`
`
`
`
`
`1 This order addresses issues common to all cases; therefore, we issue a
`single order to be entered in each case.
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`On December 3, 2015, a conference call was held among counsel for
`
`both parties and Judges Pettigrew, Weatherly, and Chagnon. During the
`
`call, several issues were raised, each of which is discussed below.
`
`Additional Briefing on Identification of Real-Parties-In-Interest:
`
`In its Preliminary Response (Paper 212, “Prelim. Resp.”), Patent
`
`Owner, Applications In Internet Time, LLC, raises the issue of whether
`
`Petitioner, RPX Corporation, has identified properly all real-parties-in-
`
`interest (“RPI”) in these proceedings. See Prelim. Resp. 2–20. Petitioner
`
`requested authorization to file a reply to the Preliminary Response, limited
`
`to the issue of whether all RPIs have been identified. Patent Owner did not
`
`oppose Petitioner’s request, but requested authorization to file a sur-reply.
`
`During the call, we authorized Petitioner to file a reply, limited to the issue
`
`of the identification of real-parties-in-interest. The reply is limited to
`
`fifteen (15) pages and is to be filed by December 14, 2015. We also
`
`authorized Patent Owner to file a sur-reply, similarly limited in subject
`
`matter. The sur-reply is limited to five (5) pages and is to be filed no later
`
`than seven (7) business days after the date on which Petitioner files its reply.
`
`As indicated during the call, Petitioner may include relevant
`
`testimonial evidence with its reply. Patent Owner will have an opportunity
`
`to cross-examine any such witnesses if trial is instituted in these
`
`proceedings.
`
`Protective Order:
`
`With its Preliminary Response, Patent Owner filed a Motion for Entry
`
`of Protective Order, Motion to Seal, and Motion to Redact. Paper 19. The
`
`
`2 The relevant papers have been filed in each of the three cases. Citations
`are to the papers filed in IPR2015-01750 for convenience.
`
`2
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`Motion requests entry of the Default Protective Order set forth in the Office
`
`Patent Trial Practice Guide. Id. at 1 (citing 77 Fed. Reg. 48,756, 48,771
`
`(Aug. 14, 2012)). During the call, we reminded the parties that a protective
`
`order is not automatically entered in Board proceedings. Instead, as required
`
`by the rule, unless otherwise ordered a party must file a motion requesting
`
`that the default or other proposed protective order be entered by the Board.
`
`37 C.F.R. § 42.54(a); see Trial Practice Guide, 77 Fed. Reg. at 48,760.
`
`A proposed protective order must accompany the motion. See 37 C.F.R.
`
`§ 42.54(a). No such proposed order was submitted with Patent Owner’s
`
`Motion. It is our understanding the parties previously agreed to be bound by
`
`the Standing Default Protective Order (Trial Practice Guide, 77 Fed. Reg. at
`
`App. B). During the call, we instructed the parties that Petitioner or Patent
`
`Owner is to file, as an exhibit, a signed copy of the proposed protective
`
`order. An additional motion accompanying the exhibit is not necessary.
`
`Authorization to File Motion for Sanctions:
`
`During the call, Petitioner set forth several alleged violations by
`
`Patent Owner of the protective order,3 and requested authorization to file a
`
`Motion for Sanctions, based on these alleged violations. In particular,
`
`Petitioner alleges that Patent Owner’s counsel has disclosed Petitioner’s
`
`confidential information to unauthorized individuals, namely Mr. Nick
`
`Boebel and Mr. Francis P. Knuettel, II. See also Papers 15, 16 (copies of the
`
`standard acknowledgement for access to protective order material, signed by
`
`Mr. Boebel and Mr. Knuettel, respectively).
`
`
`3 Although a protective order has not yet been entered in these proceedings,
`the parties indicated during the call that they were operating with the
`understanding that the Standing Default Protective Order set forth in the
`Trial Practice Guide applied to these proceedings.
`
`3
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`Based on the information presented during the call, we authorized
`
`Petitioner to file a Motion for Sanctions, based on the alleged protective
`
`order violations. The Motion is limited to fifteen (15) pages, and is to be
`
`filed by December 21, 2015. Patent Owner is authorized to file an
`
`Opposition to the Motion, also limited to fifteen (15) pages and to be filed
`
`no later than twelve (12) business days after the date on which Petitioner
`
`files its Motion. As discussed during the call, Patent Owner also will
`
`provide to Petitioner, no later than December 14, 2015, Declarations from
`
`Mr. Boebel and Mr. Knuettel regarding the specific extent of Petitioner’s
`
`confidential information to which they were provided access.
`
`Withdrawal of Counsel:
`
`During the call it also was brought to our attention that Patent Owner
`
`had filed Amended Patent Owner Mandatory Notice Information, attempting
`
`to withdraw Mr. Steven Sereboff as counsel in these proceedings.
`
`See Paper 22. Counsel may not withdraw from a proceeding before the
`
`Board without authorization for such withdrawal. See 37 C.F.R. § 42.10.
`
`During the call, we authorized Patent Owner to file, in each proceeding, a
`
`motion under 37 C.F.R. § 42.10(e) requesting withdrawal of lead counsel
`
`and substitution of new lead counsel.
`
`Accordingly, it is:
`
`ORDERED that Petitioner is authorized to file in each proceeding a
`
`reply to the Preliminary Response, on the issue of the identification of real-
`
`parties-in-interest, limited to fifteen (15) pages, by December 14, 2015;
`
`FURTHER ORDERED that Patent Owner is authorized to file in each
`
`proceeding a sur-reply, limited to five (5) pages, no later than seven (7)
`
`business days after the date on which Petitioner files its reply;
`
`4
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`FURTHER ORDERED that the parties will submit in each
`
`proceeding, as an exhibit, a signed copy of the proposed protective order;
`
`FURTHER ORDERED that Petitioner is authorized to file in each
`
`proceeding a Motion for Sanctions, limited to fifteen (15) pages, by
`
`December 21, 2015;
`
`FURTHER ORDERED that Patent Owner is authorized to file in each
`
`proceeding an Opposition to the Motion for Sanctions, limited to fifteen (15)
`
`pages, no later than twelve (12) business days after the date on which
`
`Petitioner files its Motion;
`
`FURTHER ORDERED that Patent Owner will provide to Petitioner,
`
`no later than December 14, 2015, Declarations from Mr. Boebel and
`
`Mr. Knuettel regarding the specific extent of Petitioner’s confidential
`
`information to which they were provided access;
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`
`Motion under 37 C.F.R. § 42.10(e) to Withdraw Lead Counsel, and
`
`designating one attorney as lead counsel and listing all attorneys that are
`
`back-up counsel.
`
`5
`
`

`
`IPR2015-01750 (Patent 8,484,111 B2)
`IPR2015-01751, IPR2015-01752 (Patent 7,356,482 B2)
`
`PETITIONER:
`
`Richard F. Giunta
`Elisabeth H. Hunt
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`EHunt-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`
`PATENT OWNER:
`
`Steven C. Sereboff
`M. Kala Sarvaiya
`Jonathan Pearce
`SoCal IP Law Group LLP
`ssereboff@socalip.com
`ksarvaiya@socalip.com
`jpearce@socalip.com
`
`
`
`6