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PayPal, Inc. v. PersonalWeb Technologies, LLC

Docket IPR2019-01111, Patent Trial and Appeal Board (May 20, 2019)
David McKone, Denise Pothier, Joni Chang, Michael Zecher, presiding
Case TypeInter Partes Review
Patent
7802310
Patent Owner PersonalWeb Technologies, LLC
Petitioner PayPal, Inc.
Petitioner Strava
...
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33 Refund Approval: Notice of Refund

Document IPR2019-01111, No. 33 Refund Approval - Notice of Refund (P.T.A.B. May. 14, 2020)
and DOLLAR SHAVE CLUB, INC., Petitioner
Petitioner’s request for a refund of certain post-institution fees paid on May 20, 2019 in the above proceeding is hereby granted.
The amount of $15,000.00 has been refunded to Petitioner’s deposit account.
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 and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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31 Decision Denying Request for Rehearing Petitioner: DECISIONDenying Petitioners Request for Rehearing of Decision on Institution

Document IPR2019-01111, No. 31 Decision Denying Request for Rehearing Petitioner - DECISIONDenying Petitioners Request for Rehearing of Decision on Institution (P.T.A.B. Mar. 16, 2020)
The District Court granted Amazon’s motion with respect to allegations involving use of S3, barring Patent Owner from asserting any infringement claim against Amazon or its customer, including Petitioner Entities, based on use of S3.
In our Decision, we also noted that the District Court’s articulation “is very similar, if not identical, to the third Taylor category (adequate representation by the named party), where nonparty preclusion based on a privity relationship may be found.” Dec. 20.
Therefore, our Decision denying the Petition is consistent with Taylor’s framework and grounded in due process, finding Amazon is a privy of several Petitioner Entities under Taylor’s third category.
In a related argument, Requesters argue that our Decision runs counter to Power Integrations, Inc. v. Semiconductor Components Industries, LLC, 926 F.3d 1360 (Fed. Cir. 2019), because we only evaluated whether privity existed in the past (at the time of the District Court’s summary judgment ruling) and did not address the issue of privity in the context of changing circumstances (the District Court’s dismissal of Patent Owner’s claims related to Amazon’s S3 product).
Patent 7,802,310 B2 Manhattan Bank and Manning (and Petitioner Entities’ arguments regarding those cases) and concluded that they were inapposite because the circumstances giving rise to privity have not changed.
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30 Order: Order Denying POP Request

Document IPR2019-01111, No. 30 Order - Order Denying POP Request (P.T.A.B. Feb. 13, 2020)
RETAILMENOT, INC., and DOLLAR SHAVE CLUB, INC., Petitioner,
Before LAURA A. PETER,1 Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, ANDREW HIRSHFELD, Commissioner for Patents, and SCOTT R. BOALICK, Chief Administrative Patent Judge.
1 Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, took no part in this decision.
The Director, pursuant to Standard Operating Procedure 2 (SOP 2), has delegated his authority to Laura A. Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.
The Office has received a request for Precedential Opinion Panel (POP) review of an issue raised in these cases.
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29 Notice: Notification of Receipt of POP Request

Document IPR2019-01111, No. 29 Notice - Notification of Receipt of POP Request (P.T.A.B. Dec. 31, 2019)
RETAILMENOT, INC., and DOLLAR SHAVE CLUB, INC., Petitioner,
The Office has received a request for Precedential Opinion Panel (POP) review of an issue raised in these cases.
The request is under review.
The Office will provide another notification after a decision on the request has been made.
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27 Decision Denying Institution: Decision Denying Institution of Inter Partes Review

Document IPR2019-01111, No. 27 Decision Denying Institution - Decision Denying Institution of Inter Partes Review (P.T.A.B. Nov. 22, 2019)
The term “privity” is used “more broadly, as a way to express the conclusion that nonparty preclusion is appropriate on any ground.” Taylor v. Sturgell, 553 U.S. 880, 894 n.8 (2008) (citing 18A Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4449, pp. 351−53 & n.33 (2d ed. 2002) (hereinafter “Wright & Miller”)); WesternGeco, 889 F.3d at 1318−19.
In Petitioner Entities’ view, the MDL court’s finding of privity is unrelated to “Petitioners’ ability to independently defend themselves in the PTAB due to non-S3 allegations,” because it involved estoppel issues resulting from the dismissal of the Texas Action.
The MDL court also found that an indemnification agreement provided another “basis to find that there is privity between Amazon and its customers for the specific ‘purpose[] of determining the preclusive effect of the first judgment.’” Id. at 15 (quoting Transclean, 474 F.3d at 1306).
The evidence identified above substantiates that some Petitioner Entities (e.g., PayPal) and Amazon, a prior litigant to the Texas Action, are “‘so closely related’ ... that it is fair to treat them as the same parties for purposes of determining” privy.
We further conclude that the above evidence shows that Amazon shares the same interest with at least some of Petitioner Entities in this proceeding and that Amazon’s representation in the Texas Action was adequate to establish a privity relationship for purposes of the statutory bar under § 315(b).
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23 Order: Conduct of the Proceedings37 CFR § 425a

Document IPR2019-01111, No. 23 Order - Conduct of the Proceedings37 CFR § 425a (P.T.A.B. Sep. 25, 2019)
A conference call in these proceedings was held on September 24, 2019, among respective counsel for the parties and Judges Chang, Pothier, and Zecher.
The call was requested by the panel to discuss the privy and real party in interest issues raised by Patent Owner, PersonalWeb Technologies, LLC (“PersonalWeb”), in the Preliminary Responses filed in each proceeding.
3 As we indicated during the conference call, the panel underscores that filing PersonalWeb’s counterclaims, dated May 25, 2018, as an exhibit in these proceedings will be helpful to analyze the issues of privy and real party in interest and their applicability to 35 U.S.C. §§ 315(a)(1) and/or 315(b).
Based on the specific facts of these proceedings, the panel determined that it would benefit from additional briefing on the issues identified above.
FURTHER ORDERED that Petitioner entities are authorized to file new evidence with each reply, but the evidence must be pertinent to the issues identified above; FURTHER ORDERED that PersonalWeb is authorized to file a five page sur-reply in each proceeding no later than Tuesday, October 8, 2019, that is responsive to the issues addressed by Petitioner entities in each reply; and FURTHER ORDERED that PersonalWeb is authorized to file new evidence with each sur-reply, but it must be responsive to the issues addressed by Petitioner entities in each reply.
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13 Decision: DECISION Granting Patent Owners Motions for Pro Hac Vice Admission of Mr Lawrence M Hadley

Document IPR2019-01111, No. 13 Decision - DECISION Granting Patent Owners Motions for Pro Hac Vice Admission of Mr Lawrence M Hadley (P.T.A.B. Aug. 22, 2019)
Patent Owner, PersonalWeb Technologies, LLC (“PersonalWeb”), filed a Motion for Pro Hac Vice Admission of Mr. Lawrence M. Hadley in each of the proceedings identified above.
Mr. Hadley declares that he is a member in good standing of the State Bar of California and that he is admitted to practice before several district and appellate courts.
Moreover, the facts alleged in Mr. Hadley’s Declaration comply with all the requirements set forth in our representative Order authorizing motions for pro hac vice admission.
On this record, we determine that Mr. Hadley has sufficient legal and technical qualifications to represent PersonalWeb in these proceedings.
FURTHER ORDERED that Mr. Hadley shall comply with the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title 37, Code of Federal Regulations; and FURTHER ORDERED that Mr. Hadley shall be subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), as well as the Office’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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