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Trials@uspto.gov
`571-272-7822
`
` Paper No. 74
` Entered: September 14, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`COSTCO WHOLESALE CORP.,
`Petitioner,
`
` v.
`
` ROBERT BOSCH LLC,
`Patent Owner.
`
`Cases1
`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
` IPR2016-00039 (Patent 7,228,588 B2)
` IPR2016-00040 (Patent 7,484,264 B2)
` IPR2016-00041 (Patent 8,099,823 B2)
` _______________
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`BARRY L. GROSSMAN, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This order addresses issues that are the same for each case. The parties are
`not authorized to use this heading style.
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`At Patent Owner’s request, the Board held a conference call with the
`parties. Patent Owner provided a court reporter and will file a copy of the
`transcript in each case.
`Patent Owner provided the status of the corresponding Federal Circuit
`appeal for each of our proceedings: the appeal of IPR2016-00034 is
`proceeding; the appeal of IPR2016-00041 has been dismissed due to the
`request for rehearing pending before the Board (see IPR2016-00041, Paper
`73); and appeal of the remaining cases is stayed pending outcome of our
`rehearing decision in IPR2016-00041 (id.).
`Patent Owner requests authorization to file a motion in each case, in
`view of a written settlement agreement between the parties, seeking to
`vacate each Final Written Decision or, in the alternative, to otherwise
`prevent the Office from issuing a certificate pursuant to 35 U.S.C. § 318(b)
`in each case. Petitioner opposes, contending that such action is not
`appropriate because the proceedings have been terminated.
`In IPR2016-00041, we authorize Patent Owner to file a motion
`addressing whether the Board may either vacate a Final Written Decision, or
`otherwise not issue a § 318(b) certificate upon reaching Final Written
`Decision, based upon settlement between the parties when that settlement is
`made after entry of the Final Written Decision but before either (1) time for
`appeal has expired or (2) appeal has terminated. In particular, the Motion
`should address whether Patent Owner’s requests are permissible under
`35 U.S.C. §§ 317(a), 318(b), or any other statute or Rule applicable in these
`
`2
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`circumstances. The Motion should cite to any supporting authority. The
`Motion may address whether permitting such settlement serves the public
`interest, and argue any other policy considerations.
`As to IPR2016-00034, IPR2016-00036, and IPR2016-00038–40, we
`note that “the subject matter of the appeal is transferred” to the Federal
`Circuit upon the filing of a notice of appeal. In re Allen, 115 F2.d 936, 941
`(CCPA 1940). Under Allen, the USPTO may perform only “purely
`ministerial function[s]” once such a notice of appeal is filed. In re Grier,
`342 F2.d 120, 123 (CCPA 1965). We deny Patent Owner’s request to file a
`motion at this time in these cases.2 Notwithstanding, the motion in
`IPR2016-00041 may also address whether permitting settlement and
`vacating the Final Written Decision when appeal is pending at the Federal
`Circuit would be a ministerial act by the Board. See generally Mitsubishi
`Cable Industries, Ltd v. Goto Denshi Co., Case No. IPR2015-01108 (PTAB
`May 5, 2017) (Paper 28).
`It is ORDERED that Patent Owner may file a motion in IPR2016-
`00041, as outlined above, not to exceed fifteen pages, no later than five
`business days from entry of this order;
`
`2 Further, because of the differences in stances between the cases, slightly
`different briefs would need to be filed in these cases. For the sake of
`efficiency, we decide to hold briefing on this question in the ’00041 case, to
`have all issues raised addressed in one brief.
`3
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`
`FURTHER ORDERED that Petitioner may file an opposition in
`IPR2016-00041, not to exceed fifteen pages, no later than five business days
`from service of Patent Owner’s Motion;
`FURTHER ORDERED we deny Patent Owner’s request to file a
`motion in IPR2016-00034, IPR2016-00036, IPR2016-00038, IPR2016-
`00039, and IPR2016-00040.
`
`
`
`
`
`4
`
`
`

`

`IPR2016-00034 (Patent 6,973,698 B1)
`IPR2016-00036 (Patent 6,944,905 B2)
`IPR2016-00038 (Patent 6,292,974 B1)
`IPR2016-00039 (Patent 7,228,588 B2)
`IPR2016-00040 (Patent 7,484,264 B2)
`IPR2016-00041 (Patent 8,099,823 B2)
`
`For PETITIONER:
`Richard M. Koehl
`richard.koehl@hugheshubbard.com
`
`James R. Klaiber
`james.klaiber@hugheshubbard.com
`
`David E. Lansky
`david.lansky@hugheshubbard.com
`
`Stefanie Lopatkin
`stefanie.lopatkin@hugheshubbard.com
`
`For PATENT OWNER:
`
`Patrick R. Colsher
`SHEARMAN & STERLING LLP
`patrick.colsher@shearman.com
`
`5
`
`

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