Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 19
`Entered: December 21, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`This Order concerns an issue that arose at the December 14, 2018 oral
`hearing in this case. At the oral hearing, Patent Owner raised the issue of
`whether the Petition properly identified all real parties-in-interest. Patent
`Owner raised this issue in its Preliminary Response by presenting arguments
`and evidence concerning the identification of Petitioner’s real party in
`interest (PO’s “Preliminary Response RPI Arguments and Exhibits”). See
`
`
`Tel: 571-272-7822
`
`
`Paper 19
`Entered: December 21, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`This Order concerns an issue that arose at the December 14, 2018 oral
`hearing in this case. At the oral hearing, Patent Owner raised the issue of
`whether the Petition properly identified all real parties-in-interest. Patent
`Owner raised this issue in its Preliminary Response by presenting arguments
`and evidence concerning the identification of Petitioner’s real party in
`interest (PO’s “Preliminary Response RPI Arguments and Exhibits”). See
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`Preliminary Response (Paper 5), 28–33; Exs. 2001–2005. Patent Owner,
`however, did not raise this issue during the trial: in the Patent Owner
`Response, Patent Owner did not present its Preliminary Response RPI
`Arguments, did not cite its Preliminary Response RPI Exhibits, and did not
`present any other arguments or evidence relating to the identification of
`Petitioner’s real party in interest. See Paper 9. At the oral hearing, Patent
`Owner, nevertheless, contended that it had not waived its Preliminary
`Response RPI Arguments by not including them in the Patent Owner
`Response because those arguments do not concern patentability and, thus,
`were not required to be raised in the Patent Owner Response under the
`Scheduling Order (Paper 7). Patent Owner further contended that these
`arguments could not be waived because a challenge to the Petition’s
`identification of a real party in interest is not waivable. Patent Owner, at the
`oral hearing, presented arguments on the issue of real party in interest, with
`Petitioner objecting based on waiver.
`At the oral hearing, Patent Owner argued that Patent Owner’s
`Preliminary Response RPI Arguments and Evidence should be considered,
`presented additional arguments concerning real party in interest at the oral
`hearing with associated demonstratives, and asserted that these arguments
`and evidence should be addressed in our Final Written Decision. Petitioner
`disagreed, but requested that, in light of Patent Owner’s failure to raise the
`issue of real party in interest in its Response, Petitioner should be given an
`opportunity to respond to Patent Owner’s RPI Arguments and Evidence, if
`we were to consider those arguments and evidence.
`At the oral hearing, we indicated that we were not persuaded by
`Patent Owner’s contentions regarding waiver. Nevertheless, we now
`
`2
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`authorize Patent Owner, if it wishes, to file a Motion, of no more than five
`pages, requesting that we address, in our Final Written Decision, the
`Preliminary Response RPI Arguments and Exhibits and the arguments
`regarding real party in interest Patent Owner made at the oral hearing with
`the associated demonstratives. The Motion shall only (i) address Patent
`Owner’s request that we consider its Preliminary Response RPI Arguments
`and Exhibits and the arguments regarding real party in interest that Patent
`Owner made at the oral hearing and set forth in its demonstratives; and (ii),
`if Patent Owner desires, further address the case law Patent Owner presented
`at the oral argument and in its demonstratives concerning real party in
`interest as applied to this case. No new evidence shall be filed with the
`Motion.
`Given the late stage of the proceedings, expedited briefing is required.
`If Patent Owner elects to file the Motion, it shall, via email, notify Petitioner
`of its intent to file this Motion within fourteen days1 from the issuance of
`this Order. Patent Owner’s Motion shall be due within twenty-one days
`from the issuance of this Order.
`Petitioner may file an Opposition to Patent Owner’s Motion, of no
`more than five pages, within forty-two days from the issuance of this Order.
`No reply to Petitioner’s Opposition to Patent Owner’s Motion is authorized.
`We recognize that Petitioner did not have an opportunity to respond to
`Patent Owner’s Preliminary Response RPI Arguments and Exhibits in its
`Reply to Patent Owner’s Response (Paper 10). Given the late stage of the
`proceedings, we do not anticipate ruling on Patent Owner’s Motion prior to
`
`
`1 The term “days” refers to calendar days.
`
`3
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`the issuance of a Final Written Decision. Thus, if the Motion is filed,
`Petitioner is authorized to file a Reply to Patent Owner’s Preliminary
`Response RPI Arguments and Exhibits (“RPI Reply”), of no more than ten
`pages, responding only to (i) Patent Owner’s Preliminary Response RPI
`Arguments and Exhibits, (ii) the arguments regarding the issue of real party
`in interest that Patent Owner presented at the oral hearing and in Patent
`Owner’s demonstratives addressing real party in interest; and (iii) any
`further elaboration Patent Owner provides in its Motion addressing the case
`law it cited at oral hearing and in its demonstratives concerning the real
`party in interest. The RPI Reply shall be filed within forty-two days from
`the issuance of this Order. Patent Owner shall have two days from the filing
`of the RPI Reply to serve any objections under 37 C.F.R. § 41.155(b)(1) to
`any new evidence submitted with the RPI Reply. Petitioner shall have four
`days from the filing of those objections to serve and file any supplemental
`evidence under 37 C.F.R. § 41.155(b)(2).
`If Petitioner relies upon new testimonial evidence in the RPI Reply,
`Patent Owner may cross examine the declarant(s) concerning that
`testimonial evidence. See 37 C.F.R. § 41.157. Patent Owner also may file
`RPI Observations concerning that RPI cross examination within twenty-one
`days of the filing of the RPI Reply. The Scheduling Order sets forth the
`requirements for observations and responses and the permissible dates for
`cross examination. Paper 7, 5. Patent Owner shall file the transcripts of its
`RPI cross examinations with its RPI Observations, and, in light of the late
`presentation of the RPI issue, Patent Owner shall be responsible for the court
`reporter fees for the RPI cross examinations.
`
`4
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`
`Petitioner may file responses to the RPI Observations and, if
`necessary, any errata sheets for the cross examinations within seven days of
`the filing of the RPI Observations.
`
`It is hereby ORDERED:
`If Patent Owner decides to file the Motion, it shall notify Petitioner
`via email of its intent to file this Motion within fourteen days from the
`issuance of this Order.
`Patent Owner shall have twenty-one days from the issuance of this
`Order to file the Motion. The Motion will be no more than five pages.
`If Patent Owner files the Motion, Petitioner shall have forty-two days from
`the issuance of this Order to file (a) an Opposition to the Motion of no more
`than five pages and (b) an RPI Reply, of no more than ten pages. No reply
`to Petitioner’s Opposition to the Motion is authorized.
`Patent Owner shall have two days from the filing of the RPI Reply to
`file any objections to any new evidence submitted with the RPI Reply.
`Petitioner shall have four days from the filing of those objections to serve
`and file any supplemental evidence.
`If Petitioner cites new testimonial evidence in the RPI Reply, Patent
`Owner may (i) cross examine the declarant(s) about that testimonial
`evidence and (ii) within twenty-one days of the filing of the RPI Reply, file
`Observations about those RPI cross examinations, Patent Owner shall file
`transcripts for any RPI cross examinations with its RPI Observations.
`If Patent Owner files RPI Observations, Petitioner shall have seven
`days from the filing of those observations to file responses to those RPI
`Observations and any errata sheets for the RPI cross examinations.
`
`5
`
`
`
`IPR2018-00043
`Patent 9,454,748 B2
`
`FOR PETITIONER:
`
`David W. O’Brien
`Raghav Bajaj
`David L. McCombs
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`david.mccombs.ipr@haynesboone.com
`
`Jonathan Stroud
`Roshan Mansinghani
`Jonathan Bowser
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`jbowser@unifiedpatents.com
`
`
`FOR PATENT OWNER:
`
`Terry L. Watt
`CROWE & DUNLEVY
`terry.watt@crowedunlevy.com
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`michael@ahtlawfirm.com
`larry@ahlawfirm.com
`
`
`6
`
`
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