Paper 51
`
`
` Entered: October 16, 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 and Expungement of Paper
`37 C.F.R. §§ 42.5 and 42.7
`
`
`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)
`IPR2015-00123 (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)
`
`Patent Owner’s Patent Owner Responses were due July 8, 2015, in the
`
`above-identified proceedings. Patent Owner did not file a Patent Owner
`
`Response in any of the proceedings. Nor did Patent Owner arrange a
`
`conference call with the Board and opposing counsel explaining that it
`
`would not file a Patent Owner Response per Board instructions to do so. See
`
`Paper 37, 3.2 Because Patent Owner did not file a Patent Owner Response in
`
`any of the proceedings, on September 28, 2015, we ordered Patent Owner to
`
`file a paper in each proceeding explaining whether Patent Owner has
`
`abandoned the contest.3 Paper 57 (“Order”). On October 15, 2015, Patent
`
`Owner filed a paper in response to the Order in each proceeding. Paper 58
`
`(“Submission”). For the following reasons, we expunge the Submission.
`
`The Order instructed Patent Owner to file a paper explaining whether
`
`Patent Owner has abandoned the contest with an explanation that Patent
`
`Owner understands such abandonment will lead to the cancellation of its
`
`involved claims, or explain that it has not abandoned the contest. Paper 57.
`
`While the Submission explains that Patent Owner does not abandon the
`
`contest, the Submission is contrary to our Order, in that it contains many
`
`arguments outside the scope of the Order. Moreover, the arguments in the
`
`Submission reference other papers, essentially incorporating by reference
`
`those papers into the Submission contrary to 37 C.F.R. § 42.6(a)(3). In
`
`essence, the Submission is improper, goes beyond the scope of what we
`
`requested, and is prejudicial to Petitioner, who has not had an opportunity to
`
`
`2 Citations are to IPR2015-00122.
`3 An abandonment of the contest is construed as a request for adverse
`judgment. 37 C.F.R. § 42.73(b)(4). A request for adverse judgment, on
`behalf of a patent owner, would result in the cancellation of the involved
`claims of a challenged patent.
`
`2
`
`

`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`respond to the Submission. Still there are other procedural errors with the
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`Submission.
`
`The Submission is single spaced contrary to 37 C.F.R. § 42 (a)(2)(iii),
`
`which explains that double spacing must be used in documents created for
`
`the proceeding. Lastly, Patent Owner previously was instructed that all
`
`papers filed subsequent to June 23, 2015 must contain the signatures of both
`
`Mr. Buchheit and Mr. McGhie. Paper 56. The Submission contains only the
`
`signature of Brian Buchheit on the certificate of service page.
`
`We understand from the Submission that Patent Owner does not
`
`abandon the contest—the information we desired originally per the Order.
`
`Accordingly, there is no occasion to authorize Patent Owner to refile a paper
`
`in response to our Order. We understand that Patent Owner does not
`
`abandon the contest in any of the proceedings.
`
`For all of the above reasons, the Submission is contrary to prior Board
`
`orders and Board Rules, and, therefore, shall be expunged from the records
`
`of each of the proceedings. 37 C.F.R. § 42.7(a).
`
`
`
`It is
`
`Order
`
`ORDERED that Patent Owner’s October 15, 2015 Submission in each
`
`of the above-identified proceedings be expunged from the record.
`
`3
`
`
`
`

`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`
`PETITIONER:
`
`
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`4
`
`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