`571-272-7822
`
`Paper 38
`
`Entered: June 6, 2018
`
`
`
`UN1TED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TWITTER, INC.,
`
`Petitioner,
`
`V.
`
`STI-ACQ, LLC,
`
`
`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)1
`
`GRANT OF GOOD CAUSE EXTENSION
`
`35 USC.§ 316(a)(ll) and 37 C.F.R. § 42.JOO(c)
`
`
`
`
`
`Pursuant to 35 U.S.C. § 316(a)(l l), "the final determination in an
`
`
`
`
`
`
`
`
`
`
`
`
`
`inter partes review [shall] be issued not later than 1 year after the date on
`
`
`
`
`
`which the Director notices the institution of a review under this chapter,
`
`
`
`
`
`
`
`except that the Director may, for good cause shown, extend the I-year
`
`
`
`
`
`
`
`
`
`period by not more than 6 months .... " The Director has delegated the
`
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`
`
`
`
`
`
`use this caption style.
`
`
`
`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)
`
`authority to extend the one—year period to the Chief Administrative Patent
`
`Judge. See 37 C.F.R. § 42'.100(c). In particular, 37 C.F.R. § 42.100(c)
`
`provides :
`
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be extended by up to six
`months for good cause by the Chief Administrative Patent
`Judge .
`.
`.
`.
`
`In accordance with 37 C.F.R. § 42.100(c), the Chief Administrative Patent
`
`Judge has determined that good cause exists to extend the one—year period
`
`for issuing a Final Written Decision in the present proceedings.
`
`On November 30, 2017, YouToo Technologies LLC (“YonToo”), the
`
`Patent Owner at that time, filed for bankruptcy. Ex. 2003 .2 Prior to and
`
`during the bankruptcy, the panel extended the schedule in these proceedings
`
`several times. In particular, on November 8, 2017, the panel extended Due
`
`Dates 1 and 2 (originally set for November l3, 2017 and February 12, 2018
`
`respectively) at Patent Owner’s request and to allow Patent Owner time to
`
`retain new lead counsel. See Paper 17. Following the bankruptcy filing,
`
`Patent Owner moved to stay these proceedings, and during the pendency of
`
`the bankruptcy, the panel extended Due Dates 1 and 2 on December 7, 2017.
`
`Paper 20. The panel further extended Due Date 1 on December 28, 2017,
`
`January 19, 2018, February 26, 2018, and noted that other due dates
`
`following Due Date 1 would be reset in a future order. Papers 23, 24, 31.
`
`2 For expediency and unless otherwise noted, we refer to the papers and
`exhibits in IPR2017-00829.
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`1PR2017-00830 (Patent 9,083,997 B2)
`{PR2017—01 131 (Patent 8,464,304 B2)
`1PR2017-01133 (Patent 8,601,506 B2)
`
`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”). IPR2017-001131, Ex.
`
`1032. Mandatory notices were later filed indicating that STLACQ 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;
`
`IPR2017~01 133, Paper 34. In setting the schedule in these proceedings
`
`following the sale, the panel set Due Date 1 for June 29, 2018. Paper 38, 5.
`In other words, the-panel has extended Due Date 1 from November 13, 2017
`
`to June 29, 2018. Papers 11, 38. On May 18, 2018, Patent Owner filed
`
`updated mandatory notices and a power of attorney, indicating that Patent
`
`Owner has retained new lead counsel. Papers 39, 40. Under the unique
`
`circumstances of these cases, including the needed extensions to Due Date 1
`
`as well as the sale of the cha1lenged patents to a new entity during the
`
`bankruptcy proceeding, the Chief Administrative Patent Judge has
`
`determined that good cause exists to extend the one-year period for issuing a
`
`' Final Written Decision.
`
`
`
`David P. Ruschke
`
`Chief Administrative Patent Judge
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`
`
`
`
`
`
`IPR2017-00830 (Patent 9,083,997 B2)
`
`
`
`IPR2017-0l 131 (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
`
`4
`
`