`571-272-7822
`
`
` Paper No. 39
`Entered: June 6, 2018
`
`
`UNITED 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
`____________
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`
`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)
`
`
`On November 30, 2017, after institution of these proceedings but
`before a Patent Owner Response had been filed, YouToo Technologies LLC
`(“YouToo”), 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 13, 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, we extended Due Dates 1 and 2 on
`December 7, 2017. Paper 20. We 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.
`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 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;
`
`
`2 For expediency and unless otherwise noted, we refer to the papers and
`exhibits in IPR2017-00829.
`
`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)
`
`IPR2017-01133, Paper 34. The panel held a conference call with the parties
`on May 3, 2018, and determined the appropriate schedule to set in these
`proceedings, recognizing that both parties’ proposed schedules as well as the
`one ultimately set in our Order would require the statutory deadline to be
`extended for good cause in these proceedings (the one-year period normally
`available to issue a Final Written Decision expires on August 10, 2018 for
`IPR2017-00829 and IPR2017-00830 and on October 2, 2018 for IPR2017-
`01131 and IPR2017-01133). Paper 38. In that Order, we set Due Date 1 for
`June 29, 2018. Id. at 5. In other words, because of the unique circumstances
`of this case, we have 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.
`Pursuant to 35 U.S.C. § 316(a)(11), “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 1-year
`period by not more than 6 months . . . .” The Director has delegated the
`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
`. . . .
`
`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)
`
`
`In accordance with 37 C.F.R. § 42.100(c), the Chief Judge has
`determined that good cause exists to extend the one-year period for issuing a
`Final Written Decision here. IPR2017-00829, Paper 41; IPR2017-00830,
`Paper 42; IPR2017-01131, Paper 41; IPR2017-01133, Paper 38; 37 C.F.R.
`§ 42.100(c). Accordingly, the time to administer the present proceeding is
`extended by up to six months.
`It is
`ORDERED that good cause exists to extend the time of pendency in
`this proceeding; and
`FURTHER ORDERED that this proceeding is extended by up to six
`months.
`
`
`
`
`
`
`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)
`
`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
`
`5
`
`