Trials@uspto.gov
`571-272-7822
`
`Paper No. 4
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON WEB SERVICES, INC.
`AND AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`ZENTIAN LIMITED,
`Patent Owner.
`____________
`
`Case IPR2023-01193
`Patent 7,979,277
`____________
`
`Mailed: July 24, 2023
`
`Before Althea Wilburn, Trial Paralegal.
`
`
`
`
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`
`The petition for post-grant reviewfiled in the above proceeding has
`
`been accorded the filing date of July 12, 2023.
`
`
`
`

`

`IPR2023-01193
`Patent 7,979,277
`
`
`A review of the petition identified the following defect(s):
`
`• An exhibit must conform with the requirements for papers
`in §42.6 and the requirements of this paragraph.
`1. Each exhibit must have an exhibit label.
`(i) An exhibit filed with the petition must include the
`petitioner’s name followed by the exhibit number.
`(ii) For exhibits not filed with the petition, the exhibit
`label must include the party’s name followed by an
`exhibit number, the names of the parties, and the
`trial number. 37 C.F.R. 63(d).
`Petitioner must correct the defect(s) within FIVE BUSINESS DAYS
`
`from this notice. Failure to correct the defect(s) may result in an order to
`
`show cause as to why the Board should institute the trial. No substantive
`
`changes (e.g., new grounds) may be made to the petition.
`
`Patent Owner may file a preliminary response to the petition no later
`
`than three months from the date of this notice. The preliminary response is
`
`limited to setting forth the reasons why the requested review should not be
`
`instituted. Patent Owner may also file an election to waive the preliminary
`
`response to expedite the proceeding. For more information, please consult
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`
`Patent Owner is advised of the requirement to submit mandatory
`
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`
`the petition. Mandatory notices include identifying any other judicial or
`
`administrative matter that would affect, or be affected by, a decision in the
`
`proceeding. 37 C.F.R. § 42.8(b)(2). Such administrative matters include
`
`requests for certificates of correction.
`
`The parties are encouraged to use the heading on the first page of this
`
`Notice for all future filings in the proceeding.
`
`
`
`2
`
`

`

`IPR2023-01193
`Patent 7,979,277
`
`
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`
`counsel pro hac vice requires a showing of good cause. The parties are
`
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`
`Paper 7, a copy of which is available on the Board Web site under
`
`“Representative Orders, Decisions, and Notices.”
`
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`
`Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the
`
`Board Web site at http://www.uspto.gov/PTAB.
`
`To file documents, users must first obtain a user ID by registering with
`
`MyUSPTO. Information regarding how to register with MyUSPTO and use
`
`P-TACTS is available at the Board Web site at
`
`https://www.uspto.gov/patents/ptab/patent-trial-and-appeal-case-tracking-
`
`system-p-tacts.
`
`The parties are directed to contact the Board within a month of this
`
`Order if there is a need to discuss proposed changes to this Scheduling Order
`
`or proposed motions that have not been authorized in this Order or other
`
`prior Order or Notice. See Consolidated Trial Practice Guide (“Trial
`
`Practice Guide”)[1] at 9–10, 65 (guidance in preparing for a conference call);
`
`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request for an initial
`
`conference call shall include a list of proposed motions, if any.
`
`The parties may request additional conference calls as needed. Any
`
`email requesting a conference call with the Board should: (a) copy all
`
`
`[1] Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`
`3
`
`

`

`IPR2023-01193
`Patent 7,979,277
`
`parties, (b) indicate generally the relief being requested or the subject matter
`
`of the conference call, (c) include multiple times when all parties are
`
`available, (d) state whether the opposing party opposes any relief requested,
`
`and (e) if opposed, either certify that the parties have met and conferred
`
`telephonically or in person in an attempt to reach agreement, or explain why
`
`such meet and confer did not occur. The email may not contain substantive
`
`argument and, unless otherwise authorized, may not include attachments.
`
`See Trial Practice Guide at 9–10. If practicable, in order to ensure emails
`
`are consistent with the above, the panel recommends that the parties send a
`
`single, joint email that includes items (a)–(e).
`
`If there are any questions pertaining to this notice, please contact
`
`Althea Wilburn at 571-272-6230 or the Patent Trial and Appeal Board at
`
`571-272-7822.
`
`
`
`
`
`PETITIONER:
`
`J. Hadden
`Dargaye Churnet
`Saina Shamilov
`dhadden-ptab@fenwick.com
`dchurnet@fenwick.com
`sshamilov-ptab@fenwick.com
`
`
`
`PATENT OWNER:
`
`Blank Rome LLP
`1825 Eye Street, NW
`Washington DC 20006-5403
`
`
`
`
`4
`
`

`

`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION
`(ADR)
`The Patent Trial and Appeal Board (PTAB) strongly encourages
`
`parties who are considering settlement to consider alternative dispute
`resolution as a means of settling the issues that may be raised in an AIA trial
`proceeding. Many AIA trials are settled prior to a Final Written Decision.
`Those considering settlement may wish to consider alternative dispute
`resolution techniques early in a proceeding to produce a quicker, mutually
`agreeable resolution of a dispute or to at least narrow the scope of matters in
`dispute. Alternative dispute resolution has the potential to save parties time
`and money.
`
`Many non-profit organizations, both inside and outside the intellectual
`property field, offer alternative dispute resolution services. Listed below are
`the names and addresses of several such organizations. The listings are
`provided for the convenience of parties involved in cases before the PTAB;
`the PTAB does not sponsor or endorse any particular organization’s
`alternative dispute resolution services. In addition, consideration may be
`given to utilizing independent alternative dispute resolution firms. Such
`firms may be located through a standard keyword Internet search.
`
`
`CPR
`INSTITUTE
`FOR DISPUTE
`RESOLUTION
`
`IPR2023-01193
`Patent 7,979,277
`
`
`AMERICAN
`INTELLECTUAL
`PROPERTY
`LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`Telephone:
`(212) 949-6490
`Fax: (212) 949-8859
`
`575 Lexington Ave
`New York, NY 10022
`
`www.aipla.org
`
`AMERICAN
`ARBITRATIO
`N
`ASSOCIATIO
`N (AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUA
`L PROPERTY
`ORGANIZATI
`ON (WIPO)
`Telephone:
`41 22 338 9111
`Fax: 41 22 733 5428
`34, chemin des
`Colombettes
`CH-1211 Geneva 20,
`Switzerland
`www.wipo.int
`
`AMERICAN
`BAR
`ASSOCIATION
`(ABA)
`
`Telephone :
`(202) 662-1000
`N/A
`1050 Connecticut Ave,
`NW
`Washington D.C. 20036
`
`www.americanbar.org
`
`www.cpradr.org
`
`If parties to an AIA trial proceeding consider using alternative dispute
`
`resolution, the PTAB would like to know whether the parties ultimately
`decided to engage in alternative dispute resolution and the reasons why or
`why not. If the parties actually engage in alternative dispute resolution, the
`PTAB would be interested to learn what mechanism (e.g., arbitration,
`
`
`
`5
`
`

`

`IPR2023-01193
`Patent 7,979,277
`
`mediation, etc.) was used and the general result. Such a statement from the
`parties is not required but would be helpful to the PTAB in assessing the
`value of alternative dispute resolution to parties involved in AIA trial
`proceedings. To report an experience with ADR, please forward a summary
`of
`the
`particulars
`to
`the
`following
`email
`address:
`PTAB_ADR_Comments@uspto.gov
`
`
`
`
`
`6
`
`