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`
`
`
`
` Paper 37
`
`
` Entered: May 27, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN BUCHHEIT,
`Patent Owner.
`____________
`
`Cases IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`On May 21, 2015, the initial conference call2 was held among
`counsel3 for the respective parties and Judges Medley, Chang, and Braden.
`
`
`Procedural Matters
`We find ourselves, once again, explaining the proper procedure for
`
`requesting a conference call and the appropriate content of any email filed
`with the Board regarding a requested conference call. In particular, in
`requesting an initial conference call, Patent Owner’s email request was
`improper. An email requesting a conference call should copy the other party
`to the proceeding, indicate generally the relief being requested or the subject
`matter of the conference call, state whether the other party opposes the
`request, and include times when all parties are available. Emails regarding a
`conference call should not include arguments or attachments. See Technical
`issue 3 on the Board’s website
`(http://www.uspto.gov/ip/boards/bpai/prps.jsp). During the conference call,
`the particular deficiencies were discussed, along with the potential
`consequences for any future abuse of the process.
`We also find ourselves, once again, explaining to Patent Owner rules
`and procedures for taking action in these proceedings. For example, and as
`we explained, since neither party filed a motions list in preparation for the
`initial conference call, we assumed that neither party seeks authorization to
`
`
`2 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
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`3 Patent Owner is represented by Mr. Brian Buchheit, one of the named
`inventors of the involved patents, who is registered to practice before the
`Office.
`
`2
`
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`file a motion. Counsel for Petitioner verified that Petitioner did not file a
`motions list, nor does Petitioner seek authorization to file a motion at this
`time. Counsel for Patent Owner, however, Mr. Buchheit, argued that he did
`not know he needed to file a list prior to the conference call, he is acting pro
`se, and that he is not familiar with the Board’s rules and procedures.
`Instructions to file a motions list prior to the initial conference call are
`found at least in the April 23, 2015 Scheduling Order filed in each of these
`proceedings. Paper 37 at 3.4 In particular, the Scheduling Order directs
`attention to the Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,765–
`66, which describes that the Board expects the parties to file a list of
`proposed motions to provide the Board and opposing party adequate notice
`to prepare for the conference call and to plan for the proceeding. Thus, the
`parties were placed on notice that the Board expected the parties to file a
`motions list.
`From the beginning of these proceedings, Mr. Buchheit has feigned
`ignorance of Board rules and procedures, explaining that he is acting “pro
`se” and is unfamiliar with these types of proceedings. Mr. Buchheit,
`however, is an attorney, and significantly, is registered to practice before the
`Office. He has listed himself as “Lead Counsel” and is representing co-
`inventor Mr.Sean I. McGhie, who also is registered to practice before the
`Office, and who is listed as “Back-up Counsel.” Paper 4 at 4.
`We have been patient with Mr. Buchheit up to this point, by
`repeatedly explaining procedural matters that we would expect a registered
`practitioner to know. For example, the Board has on at least two occasions
`
`
`4 Citations are to IPR2015-00122.
`
`3
`
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`explained the proper procedure for requesting a conference call with the
`Board.5 Yet, we had to spend time explaining, at the outset of this call, the
`proper procedure for requesting a conference call with the Board, along with
`explaining to Mr. Buchheit that he should have filed a motions list prior to
`the call. Based on past behavior, and giving Mr. Buchheit the benefit of the
`doubt that he is not blatantly ignoring the Board’s rules and procedures, we
`assume that Mr. Buchheit has not read thoroughly the statutory provisions,
`Board rules, the Trial Practice Guide, or visited the Board’s webpage, which
`has much guidance and to which we have directed the parties to on several
`occasions. Accordingly, we herein order Mr. Buchheit to file a declaration
`certifying that he has read thoroughly the statutory provisions, Board rules,
`and Trial Practice Guide that governs these proceedings.
`
`
`Motion for Additional Discovery
`Patent Owner seeks authorization to file a motion for additional
`discovery. In particular, Patent Owner is of the impression that several
`banks should be listed as real parties-in-interest to these proceedings.
`Petitioner opposes. Notwithstanding Patent Owner’s failure to provide a
`motions list with this item on it, we have determined that Patent Owner is
`authorized to file a motion for additional discovery. As explained, the
`parties may agree to additional discovery between themselves. 37 C.F.R.
`§ 42.51(b)(2). The parties are encouraged to work together to come to any
`agreement regarding the discovery Patent Owner seeks prior to Patent
`
`
`5 Exhibit 3001 is a copy of two electronic mail messages, explaining the
`proper procedure for requesting a conference call with the Board.
`
`4
`
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`Owner filing its motion for additional discovery. The motion should include
`only those items for which the parties could not agree.
`During the call, the Board also explained that a party moving for
`additional discovery “must show that such additional discovery is in the
`interests of justice.” See 35 U.S.C. § 316(a)(5); 37 C.F.R. § 42.51(b)(2).
`The factors set forth in Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC,
`Case IPR2012-00001 (PTAB March 13, 2013) (Paper 26) are important
`factors in determining whether a discovery request meets the statutory and
`regulatory necessary “in the interest of justice” standard. Accordingly,
`Patent Owner’s motion should explain with specificity the discovery
`requested and why such discovery is necessary “in the interest of justice”
`using those factors. In that regard, Patent Owner should not expect the
`Board to attempt to sort through a list of items to ascertain which items may
`meet the necessary in the interest of justice standard. Patent Owner bears
`the burden to demonstrate that the additional discovery (e.g., each requested
`item) should be granted. See 37 C.F.R. § 42.20(c).
`
`
`Motion to Amend
`Patent Owner indicated that it may decide to file a motion to amend.
`If Patent Owner determines that it will file a motion to amend, Patent Owner
`must arrange a conference call with the Board and opposing counsel to
`discuss the proposed motion to amend. See 37 C.F.R. § 42.121(a).
`
`
`
`
`
`5
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`Order
`
`It is
`ORDERED that Patent Owner shall file no later than May 29, 2015 a
`declaration from Mr. Brian Buchheit certifying that he has read and
`understands the statutory provisions, Board Rules, and Trial Practice Guide
`governing these proceedings;
`FURTHER ORDERED that Patent Owner is authorized to file a
`motion for additional discovery under 37 C.F.R. § 42.51(b)(2) by June 1,
`2015, limited to seven pages as specified in this order;
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition by June 5, 2015, limited to seven pages;
`FURTHER ORDERED that Patent Owner is authorized to file a reply
`by June 9, 2015, limited to three pages.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00137 (Patent 8,297,502)
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`
`PETITIONER:
`
`Robert H. Fischer
`AskeladdenIPR@fchs.com
`
`Frank A. DeLucia
`AskeladdenIPR@fchs.com
`
`Stephen Yam
`AskeladdenIPR@fchs.com
`
`Justin Oliver
`joliver@fchs.com
`
`PATENT OWNER:
`
`Brian Buchheit
`bbuchheit@gmail.com
`
`Sean McGhie
`sean.mcghie@me.com
`
`
`
`
`
`
`
`
`
`7
`
`
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