`571-272-7822
`
`
`
`
`Paper: 9
`Entered: November 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2018-01594 (Patent 6,434,687 B1)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601, IPR2018-01602, and IPR2018-01603
`(Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605, IPR2018-01606, and IPR2018-01607
`(Patent 7,620,800 B2)1
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue pertaining to all ten cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`
`On November 21, 2018, Judges Deshpande, Arbes, and Zado held a
`conference call with Microsoft Corporation (“Petitioner”) and Saint Regis
`Mohawk Tribe (“Patent Owner”). Patent Owner requested the conference
`call to seek authorization to file a motion to stay the proceedings.
`Patent Owner indicated its intent to file a petition for a writ of
`certiorari to the Supreme Court of the United States of America appealing
`the Court of Appeals for the Federal Circuit’s decision in Saint Regis
`Mohawk Tribe v. Mylan Pharms. Inc., Nos. 18-1638, 18-1639, 18-1640,
`18-1641, 18-1642, and 18-1643. Patent Owner represents that the issue it
`intends to appeal is dispositive in these IPRs, and, therefore, requests a stay
`in these proceedings pending the Supreme Court’s decision on whether to
`grant the petition for a writ of certiorari. Accordingly, Patent Owner
`requests a stay of these proceedings until March 1, 2019.
`Petitioner opposes – arguing that the issue Patent Owner intends to
`appeal has been decided. Accordingly, Petitioner opposes a stay of these
`proceedings because Petitioner believes there is no basis for doing so.
`Patent Owner alternatively requests an accommodation of extending
`the due date for certain of its preliminary responses until January because of
`pending litigation deadlines and holidays. Petitioner opposes – noting the
`district court has stayed the litigation between the parties pending these
`proceedings.
`We authorize additional briefing on the issue of staying the
`proceedings until a decision on Patent Owner’s petition for a writ of
`
`2
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`certiorari. See 37 C.F.R. § 42.20(d). Patent Owner is authorized to file a
`motion to stay, limited to this issue, of no more than ten (10) pages, due
`Friday, November 30, 2018. We further authorize Petitioner to file an
`opposition, of no more than ten (10) pages, due on Friday, December 7,
`2018. Each party shall file the same paper in all of the instant proceedings,
`using a caption similar to the first page of this Order. Also, to ensure
`sufficient time for consideration of the additional briefing, we extend the
`deadlines for Patent Owner’s preliminary responses in some of the
`proceedings. See 37 C.F.R. § 42.5(c)(2). No other deadlines are changed at
`this time.
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner is authorized for file a motion to stay
`these proceedings, of no more than ten (10) pages, due on Friday, November
`30, 2018;
`FURTHER ORDERED that Petitioner is authorized for file an
`opposition to Patent Owner’s motion to stay, of no more than ten (10) pages,
`due on Friday, December 7, 2018; and
`FURTHER ORDERED that the deadline for Patent Owner to file a
`preliminary response in Cases IPR2018-01594, IPR2018-01601,
`IPR2018-01604, and IPR2018-01605, should it choose to do so, is extended
`to January 15, 2018.
`
`
`3
`
`
`
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`PETITIONER:
`Joseph A. Micallef
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jgreenhut@sidley.com
`sidleysrclabsipr@sidley.com
`
`PATENT OWNER:
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`
`4
`
`
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