Trials@uspto.gov
`571-272-7822
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` Paper No. 22
`Entered: February 21, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00572
`Patent 8,252,571 B2
`____________
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`
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`On February 14, 2017, counsel for Patent Owner contacted the Board
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`to request authorization to file a motion to dismiss the Petition based on
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`571-272-7822
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` Paper No. 22
`Entered: February 21, 2017
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00572
`Patent 8,252,571 B2
`____________
`
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`On February 14, 2017, counsel for Patent Owner contacted the Board
`
`to request authorization to file a motion to dismiss the Petition based on
`
`
`
`
`
`
`
`IPR2017-00572
`Patent 8,252,571 B2
`
`
`sovereign immunity.1 The Board held a conference call on February 17,
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`2017, between Judges Kaiser, Abraham, and Ankenbrand and counsel for
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`Petitioner and Patent Owner, to discuss Patent Owner’s request.
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`Patent Owner argued that the Regents of the University of Minnesota
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`are an arm of the government of the State of Minnesota and that they are an
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`indispensable party to this proceeding, making proceeding against the other
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`patent owners impossible. Accordingly, Patent Owner argued that, based on
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`the panel’s decision in Covidien LP v. University of Florida Research
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`Foundation Inc., Case No. IPR2016-01274 (PTAB Jan. 25, 2017) (Paper 21)
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`(granting motion to dismiss), Patent Owner here is entitled to dismissal on
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`the ground of sovereign immunity. Patent Owner also argued that its request
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`for a motion to dismiss was timely, coming before the deadline for a
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`decision on institution and less than three weeks after the Covidien decision.
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`Patent Owner further requested that the Board extend the due date for Patent
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`Owner to file its preliminary response.
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`Petitioner argued that Covidien is not applicable because, although the
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`Regents of the University of Minnesota may have a sovereign-immunity
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`argument, the remaining patent owners do not, and the Board’s rules have no
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`rule analogous to Rule 19 of the Federal Rules of Civil Procedure, defining
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`what may and may not be done in the absence of indispensable parties.
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`Petitioner also argued that the failure of the Regents of the University of
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`
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`1 Although the Petition names only Toyota Motor Corporation as a Patent
`Owner, the challenged patent is also assigned to, inter alia, the Regents of
`the University of Minnesota. Ex. 1001, at [73].
`2
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`IPR2017-00572
`Patent 8,252,571 B2
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`Minnesota to file mandatory notices in this proceeding demonstrates that
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`they are not an indispensable party.
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`Given the unique facts presented by this proceeding, we determine
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`that it is in the interests of justice to receive briefing on the sovereign-
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`immunity question. Accordingly, we authorize Patent Owner to file a
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`motion to dismiss. The motion, not to exceed 20 pages, shall be filed no
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`later than March 3, 2017. Evidence relevant to the sovereign-immunity
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`issue may be filed as exhibits accompanying the motion to dismiss. Should
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`Patent Owner choose to file evidence in the form of declarations, and should
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`Petitioner wish to cross-examine the declarants, the parties are instructed to
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`agree on a time and location for the depositions, to take place early enough
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`to permit Petitioner to file an opposition to the motion. If the parties cannot
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`resolve any dispute about the depositions of Patent Owner’s declarants, they
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`should contact the Board to schedule a conference call to resolve the dispute.
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`Petitioner shall file any opposition to Patent Owner’s motion to
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`dismiss no later than March 17, 2017. Petitioner’s opposition shall not
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`exceed 20 pages.
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`If Petitioner files an opposition, and if that opposition includes
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`arguments regarding waiver of sovereign immunity, Patent Owner is
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`authorized to file a reply addressing only the waiver issue no later than
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`March 24, 2017. The reply shall not exceed 5 pages.
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`In order to permit the parties time to brief this issue and the Board
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`time to resolve it, Patent Owner’s request to extend the due date for its
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`3
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`IPR2017-00572
`Patent 8,252,571 B2
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`preliminary response is granted, and the due date is extended until May 17,
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`
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`2017.
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`It is, therefore,
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`ORDERED that Patent Owner is authorized to file, no later than
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`March 3, 2017, a motion to dismiss based on sovereign immunity, limited to
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`20 pages;
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`FURTHER ORDERED that, if Patent Owner files a motion to dismiss
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`based on sovereign immunity, Petitioner is authorized to file, no later than
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`March 17, 2017, an opposition to Patent Owner’s motion to dismiss, limited
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`to 20 pages;
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`FURTHER ORDERED that, if Petitioner files an opposition to Patent
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`Owner’s motion to dismiss, and if Petitioner’s opposition addresses waiver
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`of sovereign immunity by the Regents of the University of Minnesota,
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`Patent Owner is authorized to file, no later than March 24, 2017, a reply
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`addressing only the waiver issue, limited to 5 pages;
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`FURTHER ORDERED that the deadline for Patent Owner to file its
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`preliminary response is extended to May 17, 2017; and
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`FURTHER ORDERED that no other filings are authorized at this
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`4
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`time.
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`IPR2017-00572
`Patent 8,252,571 B2
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`PETITIONER:
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`David O. Simmons
`IVC PATENT AGENCY
`dsimmons@ivcpatentagency.com
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`
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`Jonathan D. Hurt
`MCDANIEL & ASSOCIATES, PC
`jhurt@technologylitigators.com
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`
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`Mark A.J. Fassold
`Jorge Mares
`Watts Guerra LLP
`mfassold@wattsguerra.comjmares@wattsguerra.com
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`
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`PATENT OWNER:
`
`Joshua A. Lorentz
`Richard Schabowsky
`John D. Luken
`Oleg Khariton
`DINSMORE & SHOHL LLP
`joshua.lorentz@dinsmore.comrichard.schabowsky@dinsmore.com
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`5
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