Trials@uspto.gov
`571-272-7822
`
`Paper 19
`Entered: October 4, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)1
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing
`
`
`571-272-7822
`
`Paper 19
`Entered: October 4, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)1
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`Judges Droesch, Parvis, and Boudreau held a conference call on
`September 29, 2021, with counsel for the parties. Counsel for Patent Owner
`requested the call seeking authorization to file a motion to stay the
`proceedings in IPR2021-00375, IPR2021-00377, and IPR2021-00582.
`Counsel for Patent Owner requests authorization to file a motion in
`each case to temporarily stay the proceedings to allow the parties to brief the
`issues of patent ownership and standing to participate in these proceedings,
`which arise from the patent ownership dispute in UNM Rainforest
`Innovations v. Industrial Technology Research Institute, No. D-202-CV-
`2021-02803 (N.M. 2d. Judicial District Court May 4, 2021) “(New Mexico
`state court proceeding”).2 Counsel for Patent Owner cites FedEx Corp. v.
`Human Sciences HC Ltd., IPR2018-01830, Paper 23 (April 10, 2018) to
`support its position that the Board can decide issues of patent ownership and
`standing. Counsel for Patent Owner also asserts that it would be a waste of
`resources for UNM Rainforest Innovations (UNM) to file responses to the
`Petitions if Industrial Technology Research Institute (ITRI) prevails in the
`New Mexico state court proceeding. Counsel for Patent Owner requests ten
`pages for its briefing.
`Counsel for Petitioner opposes Patent Owner’s request. Counsel for
`Petitioner emphasizes that 35 U.S.C. § 316(a)(11) requires a final written
`
`
`2 The proceedings in UNM Rainforest Innovations v. Dell Technologies,
`Inc., No. 6:20-cv-00468-ADA (W.D. Tex.) have been stayed pending the
`outcome of the ownership issues in the New Mexico state court proceeding.
`See, e.g., IPR2021-00375, Paper 13.
`
`
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`decision within one year of institution, which, for these cases, is 10 months
`away. Counsel for Petitioner asserts that there is no good cause to extend
`the one-year deadline. Counsel for Petitioner contends that USPTO
`assignment records indicate that UNM is the owner of record. Counsel for
`Petitioner further represents that ITRI has not been served with the Petitions
`filed in IPR2021-00375, 2021-00377, and IPR2021-00582. Counsel for
`Patent Owner cites Pixart Imaging Inc. v. Syncpoint Imaging, LLC,
`IPR2015-01347, Paper 18 (March 9, 2016) and The Jewelry Channel, Inc.
`USA d/b/a Liquidation Channel v. Americas Collectibles Network, Inc.,
`CBM2014-00119, Paper 10 (Oct. 20, 2014) to support its positions that there
`is a presumption of standing for the patent owner listed in USPTO
`assignment records and that motions to stay should not authorized. Counsel
`for Petitioner also distinguishes the facts before us from the underlying facts
`of the FedEx case. Counsel for Petitioner requests that, if the Board
`authorizes briefing, the schedule be set in parallel with the existing briefing
`schedule.
`After considering the parties’ contentions made during the conference
`call, at this time, we do not authorize Patent Owner to file a motion to stay.
`We, however, authorize Petitioner to file a ten (10) page brief in each
`proceeding to address the issues of patent ownership and standing. We also
`authorize Patent Owner to file in each proceeding a ten (10) page responsive
`brief. To mitigate the efforts and expense of both parties in the event that
`the ownership dispute in the New Mexico state court proceeding is resolved
`in favor of ITRI during briefing of these issues, we deem it appropriate, at
`
`
`
`3
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`this time, to postpone DUE DATE 1 in each proceeding to December 7,
`2021.3
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file a brief in each
`proceeding to address the issues of patent ownership and standing;
`FURTHER ORDERED that Petitioner’s brief is limited to ten (10)
`pages and shall be filed no later than October 18, 2021;
`FURTHER ORDERED that Patent Owner is authorized to file a
`responsive brief in each proceeding, limited to ten (10) pages, no later than
`November 1, 2021; and
`FURTHER ORDERED that the Scheduling Order in each proceeding
`(IPR2021-00375, Paper 15; IPR2021-00377, Paper 14; IPR2021-00582,
`Paper 12) is amended to change DUE DATE 1 to December 7, 2021.
`
`
`
`
`3A revised Scheduling Order setting DUE DATES 2 through 8 for each
`proceeding will be issued in due course. The parties may still stipulate to
`new DUE DATES 2, 3, 5, and 6, as permitted according to the Scheduling
`Order. See, e.g., IPR2021-00375, Paper 15, 9–10.
`
`
`4
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`PETITIONER:
`Jonathan Detrixhe
`Peter Chassman
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`
`
`5
`
`
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