`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 14
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` Entered: September 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INDEED, INC., MONSTER WORLDWIDE INC., and
`THELADDERS.COM, INC.,
`Petitioner,
`
`v.
`
`CAREER DESTINATION DEVELOPMENT, LLC,
`Patent Owner.
`_______________
`
`Cases CBM2014-00069 (Patent 8,374,901 B2)
`CBM2014-00070 (Patent 8,374,901 B2)
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`BUSCH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`CBM2014-00069 (Patent 8,374,901 B2)
`CBM2014-00070 (Patent 8,374,901 B2)
`
`
`On September 23, 2014, the initial conference call1 was held between
`counsel for the respective parties and Judges Medley, Petravick, and Busch.
`
`
`Motions
`Petitioner seeks authorization to file a motion to include a review of
`dependent claims 2–11 of U.S. Patent 8,374,901 (“the ’901 Patent”) under 35
`U.S.C. § 112, first paragraph in CBM2014-00070 (the “Proposed Motion”).
`Petitioner explained that it accidentally neglected to include a challenge to
`dependent claims 2–11 of the ’901 Patent. Petitioner did not provide any authority
`supporting its position that it should be allowed to add challenges to claims to the
`covered business method patent review on a basis not presented in the petition
`from which the review was instituted. The law requires that a petition must
`“identif[y], in writing and with particularity, each claim challenged, the grounds on
`which the challenge to each claim is based.” 35 U.S.C. § 322(a)(3); see also 37
`C.F.R. 42.204 (stating that a petition must “[p]rovide a statement of the precise
`relief requested for each claim challenged,” identifying the claim and the statutory
`grounds on which the challenge is based). Petitioner did not present a sufficient
`factual basis to authorize the filing of the motion. As discussed, Petitioner may file
`a covered business method patent review petition challenging claims 2–11 of the
`’901 Patent under 35 U.S.C. § 112, first paragraph. Therefore, we deny
`Petitioner’s request to file the Proposed Motion.
`
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`2
`
`
`
`
`
`CBM2014-00069 (Patent 8,374,901 B2)
`CBM2014-00070 (Patent 8,374,901 B2)
`
`
`Patent Owner indicated that it may file a motion to amend and
`acknowledged that it must arrange a conference call with the Board and opposing
`counsel to discuss any motion to amend prior to filing that motion. See 37 C.F.R. §
`42.121(a). Patent Owner was reminded that it should arrange a conference call at
`least a week in advance of the date it wishes to file a motion to amend. The parties
`were reminded that if they seek authorization to file a motion not contemplated per
`the Scheduling Order, the party requesting such authorization must arrange a
`conference call with opposing counsel and the Board.
`
`
`Schedule
`Counsel for the respective parties indicated that they have no issues with the
`Scheduling Orders entered August 20, 2014. To the extent issues arise with
`DATES 1–5 identified in the Scheduling Orders, the parties are reminded that,
`without obtaining prior authorization from the Board, they may stipulate to
`different dates for DATES 1–5, as provided in the Scheduling Orders, by filing an
`appropriate notice with the Board. The parties may not stipulate to any other
`changes to the Scheduling Orders.
`
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`Settlement
`The parties have nothing to report with respect to settlement.
`
`
`
`Order
`
`
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`3
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`
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`CBM2014-00069 (Patent 8,374,901 B2)
`CBM2014-00070 (Patent 8,374,901 B2)
`
`
`It is
`ORDERED that Petitioner’s request for authorization to file a “Motion to
`Formally Incorporate Dependent Claims 2-11 Into Case CBM2014-00070 As
`Being Encompassed By The Board’s Review of Claim 1 Under 35 U.S.C. § 112” is
`denied.
`
`
`
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`PETITIONER:
`
`Brian M. Buroker
`Peter Weinberg
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`pweinberg@gibsondunn.com
`
`Justin F. Boyce
`Jeffrey Plies
`DECHERT LLP
`justin.boyce@dechert.com
`allmonsterCBM@dechert.com
`
`PATENT OWNER:
`
`James J. Kernell
`ERICKSON KERNELL DERUSSEAU & KLEYPAS, LLC
`jjk@kcpatentlaw.com
`
`David L. Marcus
`BARTLE & MARCUS LLC
`dmarcus@bklawkc.com
`
`4
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