From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Wayne M. Helge
`Precedential_Opinion_Panel_Request
`James Wilson; holt2@fr.com; PTAB Inbound; axfptab@fr.com; IPR42342-0086IP1; Ethan Song; Aldo Noto
`IPR2021-00277 - Microsoft Corporation v Worlds Inc: Request for POP Review
`Wednesday, June 30, 2021 4:59:52 PM
`2021-06-30 IPR2021-00277 Worlds Request for Rehearing (315b).pdf
`
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`To the Board,
`
`Patent Owner Worlds Inc. respectfully requests Precedential Opinion Panel review of the Board’s
`institution decision in IPR2021-00277, issued on June 16, 2021. Patent Owner timely filed the
`attached request for rehearing under 37 CFR 42.71(d) today, June 30, 2021. Attached is a copy of
`that request for rehearing, which seeks rehearing to address the proper application of the one-year
`time bar under 35 U.S.C. § 315(b). The statutory time bar in this case is triggered by Petitioner’s
`substantial use of challenges and an expert declaration authored and funded by a prior petitioner
`and included in a petition that was itself dismissed as time-barred under § 315(b). The proper
`application of the one-year time bar under § 315(b) is of such extraordinary and recurring
`importance to the PTAB and its participants that a precedential panel is requested to correct the
`Institution Decision here, and to supply uniform guidance for future cases.
`
`Based on my professional judgment, I believe the Board panel decision is contrary to the following
`decision(s) of the Supreme Court of the United States, the United States Court of Appeals for the
`Federal Circuit, or the precedent(s) of the Board: Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir.
`2018), which sets forth the ultimate burden of proof under 35 U.S.C. 315(b); and Bungie, Inc. v.
`Worlds Inc., IPR2015-01319, Paper 62, which was terminated under § 315(b) and serves as the
`source for the copied challenges and expert declaration re-submitted in IPR2021-00277.
`
`Additionally, based on my professional judgment, I believe the Board panel decision is contrary to
`the following constitutional provision, statute, or regulation: 35 U.S.C. 315(b)
`
`Finally, based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance, namely the proper application of 35 U.S.C.
`315(b) where a petitioner presents copied challenges and an expert declaration authored and
`funded by a prior petitioner for use in a prior petition that was itself dismissed as time-barred under
`§ 315(b).
`
`/s/ wayne m. helge
`ATTORNEY OF RECORD FOR PATENT OWNER WORLDS INC.
`
`Wayne Helge, Esq.
`Partner & Registered Patent Attorney
`Davidson Berquist Jackson & Gowdey, LLP
`
`IPR2021-00277
`Ex. 3001
`
`

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