Trials@uspto.gov Paper No. 38
`571-272-7822
`
`Entered: May 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`STI-ACQ, LLC,1
`Patent Owner.
`____________
`
`Case IPR2017-00829 (Patent 9,083,997 B2)
`Case IPR2017-00830 (Patent 9,083,997 B2)
`Case IPR2017-01131 (Patent 8,464,304 B2)
`Case IPR2017-01133 (Patent 8,601,506 B2)2
`____________
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 On May 7, 2018, new mandatory notices were filed indicating that STI-
`ACQ LLC is now the Patent Owner and real party in interest in these
`proceedings. IPR2017-00829, Paper 37; IPR2017-00830, Paper 38;
`IPR2017-01131, Paper 37; IPR2017-01133, Paper 34. We have revised the
`
`
`571-272-7822
`
`Entered: May 14, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`STI-ACQ, LLC,1
`Patent Owner.
`____________
`
`Case IPR2017-00829 (Patent 9,083,997 B2)
`Case IPR2017-00830 (Patent 9,083,997 B2)
`Case IPR2017-01131 (Patent 8,464,304 B2)
`Case IPR2017-01133 (Patent 8,601,506 B2)2
`____________
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 On May 7, 2018, new mandatory notices were filed indicating that STI-
`ACQ LLC is now the Patent Owner and real party in interest in these
`proceedings. IPR2017-00829, Paper 37; IPR2017-00830, Paper 38;
`IPR2017-01131, Paper 37; IPR2017-01133, Paper 34. We have revised the
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`
`
`A conference call in these cases took place on May 3, 2018. The
`parties were represented by their respective counsel.3 The purpose of the
`call was to discuss revisions to the Scheduling Order in these proceedings
`based on the bankruptcy court’s order that any stay applicable to these
`proceedings was lifted no later than April 30, 2018. Ex. 1033.4 YouToo
`Technologies LLC’s (“YouToo’s”) motion for stay (Paper 21) remains
`pending in each proceeding. In light of the bankruptcy court’s order, we
`dismiss the motion for stay in each proceeding as moot.
`During the bankruptcy, the bankruptcy court approved an agreed order
`to sell certain of YouToo’s property, including the patents challenged in
`these proceedings. Ex. 1029; Ex. 1032. On May 1, 2018, the bankruptcy
`trustee filed a report of sale indicating the challenged patents have been sold
`to STI-ACQ LLC (“STI-ACQ” or “Patent Owner”), as assignee of Arundel
`Ventures, LLC.5 IPR2017-001131, Ex. 1032. On May 7, 2018, and
`consistent with the report of sale, new mandatory notices were filed
`
`
`caption accordingly, and the parties should use this revised caption in future
`filings in each proceeding.
`2 This Order will be entered in each case. The parties are not authorized to
`use a caption style encompassing multiple proceedings.
`3 Spencer C. Patterson represented that he has been retained as back-up
`counsel for the entity purchasing the patents at issue in these proceedings
`(i.e., STI-ACQ LLC).
`4 Unless otherwise specified, we refer to the paper and exhibit numbers in
`IPR2017-00829. Unless otherwise noted, similar papers and exhibits were
`filed in the other proceedings.
`5 This Report of Sale has been filed as an exhibit in IPR2017-01131 and
`IPR2017-01133, but not IPR2017-00829 or IPR2017-00830.
`2
`
`
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`indicating that STI-ACQ is now the Patent Owner and real party in interest
`in these proceedings. IPR2017-00829, Paper 37; IPR2017-00830, Paper 38;
`IPR2017-01131, Paper 37; IPR2017-01133, Paper 34. No powers of
`attorney for STI-ACQ have yet been filed in these proceedings.
`Because any stay applicable to these proceedings has been lifted, we
`now consider the schedule on which these cases should proceed. We have
`extended Due Date 1 several times in these proceedings, including at
`YouToo’s request prior to the bankruptcy (Paper 17) and during the
`pendency of the bankruptcy (Papers 20, 23, 24, 31). No Patent Owner
`Response or Motion to Amend has been filed in any of these proceedings.
`We directed the parties to meet and confer in advance of our May 3,
`2018, conference call regarding needed adjustments to the Scheduling
`Orders in these cases. The parties reported that they met and conferred, but
`were unable to reach agreement on a proposed schedule. Petitioner
`proposed that these proceedings move forward on the same schedule,
`whereas Patent Owner proposed that IPR2017-00829, -00830 move forward
`on a slightly accelerated schedule compared to IPR2017-01131, -01133.
`The parties’ proposed schedules have been filed as Exhibits 3004, 3005,
`3006, and 3007.
`We have considered the parties’ proposed schedules in determining
`the schedule to set in these proceedings. In doing so, we considered that
`both parties’ proposed schedules would require the statutory deadline to be
`extended for good cause in these proceedings. We also considered that the
`trustee’s motion to sell was filed in the bankruptcy court on March 13, 2018,
`Petitioner’s limited objection to the sale (which specifically mentions these
`3
`
`
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`proceedings) was filed in the bankruptcy court on April 3, 2018, and the
`bankruptcy court entered the agreed order granting relief from the automatic
`stay on April 11, 2018. We further considered Mr. Patterson’s statements
`that STI-ACQ is in the process of retaining counsel for these proceedings.
`Taking into account these considerations as well as the parties’
`explanations of their proposed schedules during our May 3, 2018 conference
`call, we set the schedule in these proceedings as shown in the Due Date
`Appendix below. All other portions of the Scheduling Order (Paper 13)
`remain in force including that the parties may stipulate to different dates for
`DUE DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).6
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s motion for stay in each proceeding is
`dismissed as moot;
`FURTHER ORDERED that Patent Owner shall file updated
`mandatory notices listing lead and back-up counsel and updated powers of
`attorney for the lead and back-up counsel listed in those mandatory notices
`no later than May 18, 2018; and
`FURTHER ORDERED that the Scheduling Order (Paper 11) is
`revised to reflect DUE DATES 1–7 provided in the Due Date Appendix
`below but is unchanged in all other respects.
`
`
`
`
`
`
`
`6 Without express authorization from the panel, the parties may not change
`DUE DATE 4 with respect to the requirement for requesting oral argument.
`4
`
`
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`DUE DATE APPENDIX
`
`DUE DATE 1 ............................................................................. June 29, 2018
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ......................................................................... August 10, 2018
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ......................................................................... August 31, 2018
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 ................................................................... September 14, 2018
`Observations regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................... September 28, 2018
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 ......................................................................... October 5, 2018
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ....................................................................... October 19, 2018
`Oral argument (if requested)
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`PETITIONER:
`
`IPR2017-00829, -00830
`David McCombs
`Gregory Huh
`Theodore Foster
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`
`IPR2017-01131, -01133
`Todd Siegel
`Andrew Mason
`Robert T. Cruzen
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`rob.cruzen@klarquist.com
`
`
`PATENT OWNER:
`Scott McKeown
`ROPES & GRAY LLP
`scott.mckeown@ropes.gray.com
`
`Spencer C. Patterson
`GRABLE MARTIN FULTON PLLC
`patterson@gchub.com
`
`Stephen L. Levine
`CARRINGTON, COLEMAN, SLOMAN & BLUMENTHAL, L.L.P.
`slevine@ccsb.com
`
`
`
`
`6
`
`
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