`571-272-7822
`
`Paper 24
`Entered: October 5, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VALVE CORPORATION,
`Petitioner,
`
`v.
`
`IRONBURG INVENTIONS LTD.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00136 (Patent 8,641,525 B2)
`IPR2017-00137 (Patent 9,089,770 B2)
`
`
`
`Before PHILLIP J. KAUFFMAN, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 We use this caption to indicate that this Decision applies to, and is entered
`in, each case. The parties are not authorized to use this type of caption.
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`
`On October 4, 2017, at Patent Owner’s request, Judge Kauffman held
`a call with counsel for each party. Patent Owner provided a court reporter
`for the call, and indicated that the transcript would be filed in both cases.
`Patent Owner seeks authorization to file a Motion to Terminate these
`proceedings based on 35 U.S.C. § 315(e)(1). Specifically, Patent Owner
`contends that Petitioner is estopped from maintaining these proceedings
`because Petitioner reasonably could have raised the ground of
`unpatentability based on the prior art reference Wörn in both IPR2016-
`00948 and IPR2016-00949, and those proceedings have now resulted in final
`written decisions.2 Patent Owner estimated ten pages and five to seven
`business days would be sufficient for preparation of the Motion. Patent
`Owner asked to have a reply to Petitioner’s opposition.
`Petitioner did not oppose the request for authorization to file the
`Motion or the amount of preparation time requested by Patent Owner.
`Petitioner indicated that given a ten page motion, a ten page opposition was
`sufficient. Petitioner asked for three weeks to a month to prepare the
`opposition, and asserted that such a time period would not negatively impact
`the schedule of these proceedings. As an alternative, Petitioner asked to
`brief the issue at oral argument as scheduled.
`The Petition in each case addresses how and why Wörn was
`discovered. See IPR2017-00136, Paper 1, 4–12; IPR2017-00137, Paper 1,
`3–11. For that reason, a great deal of time to prepare the opposition is not
`needed. Balancing Petitioner’s request for more time against the need for
`
`
`2 The final written decisions were entered September 22, 2017.
`
`2
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`this proceeding to progress in a timely manner, we give Petitioner ten
`business days to prepare the Opposition.
`Petitioner’s request to deal with this issue at the oral hearing
`scheduled for December 4 is denied because that would leave this issue open
`for nearly two months.
`We will evaluate the need for Patent Owner to reply to Petitioner’s
`opposition after the Motion and Opposition are filed.
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a Motion to
`Terminate, limited to ten pages, no later than six business days from entry of
`this order; and
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to Patent Owner’s Motion, limited to ten pages, no later than ten
`business days from entry of the Motion.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2017-00136 (Patent 8,641,525 B2)
`Case IPR2017-00137 (Patent 9,089,770 B2)
`
`PETITIONER:
`
`Joshua Harrison josh@bhiplaw.com
`Reynaldo Barcelo
`josh@bhiplaw.com
`rey@bhiplaw.com
`
`PATENT OWNER:
`
`Ehab Samuel Esamuel-ptab@manatt.com
`Danielle Mihalkanin
`Esamuel-ptab@manatt.com
`dmihalkanin@manatt.com
`
`4
`
`
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