Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 11
`Date Entered: June 14, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`Cases IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-003071
`Patents 6,375,570 B1, 6,702,675 B2, 7,303,469 B2
`____________
`
`Before JOSIAH C. COCKS and MICHAEL W. KIM, Administrative Patent
`Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses matters pertaining to each of the identified
`proceedings. We, therefore, exercise our discretion to issue one Order to be
`filed in each proceeding. The parties are not authorized to use this style
`heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 11
`Date Entered: June 14, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`Cases IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-003071
`Patents 6,375,570 B1, 6,702,675 B2, 7,303,469 B2
`____________
`
`Before JOSIAH C. COCKS and MICHAEL W. KIM, Administrative Patent
`Judges.
`
`COCKS, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses matters pertaining to each of the identified
`proceedings. We, therefore, exercise our discretion to issue one Order to be
`filed in each proceeding. The parties are not authorized to use this style
`heading for any subsequent papers.
`
`
`
`IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-00307
`Patents 6,375,570 B1, 6,702,675 B2, 7,303,469 B2
`
`
`1. Introduction
`On June 8, 2016, a conference call was conducted between respective
`counsel for the parties and Judges Cocks and Kim. Petitioner, Aristocrat
`Technologies, Inc. (“Aristocrat”), was represented by Andrea Reister.
`Patent Owner, IGT (“IGT”), was represented by Robert Sterne.2 The call
`had been requested by IGT to discuss authorization to file certain motions
`contemplated by IGT. IGT had arranged for a court reporter on the call.3
`
`2. IGT’s Requested Motions
`During the call, IGT indicated that it was requesting authorization to
`file the following motions: (a) a motion to terminate all five of the related
`IPR proceedings; and (b) a motion to stay the five related proceedings for six
`months.
`
`a. Motion to Terminate
`In our Decision instituting trial in this proceeding, we declined to
`deny institution on the basis of the equitable doctrine of assignor estoppel.
`See, e.g., IPR2016-00181, Paper 7, 18–20. IGT expressed to the panel that
`the issue of the applicability of assignor estoppel in inter partes review
`proceedings is one pending before the Court of Appeals for the Federal
`Circuit in a case styled Husky Injection Molding System v. Athena
`
`
`2 Five related inter partes review proceedings were the subject of the
`conference call. Those proceedings are: IPR2016-00181; IPR2016-00182;
`IPR2016-00252; IPR2016-00305; IPR2016-00307 (collectively “the related
`IPR proceedings.”)
`3 Once the transcript of the call is available, IGT should file a copy of it as
`an exhibit.
`
`
`
`IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-00307
`Patents 6,375,570 B1, 6,702675 B2, 7,303,469 B2
`
`Automations Ltd. (2015-1726). IGT indicated that, in the event that the
`Federal Circuit determined that assignor estoppel does apply in inter partes
`proceeding, it would seek to file a motion to terminate in each of the related
`IPR proceedings. The panel noted that, because the issue has not yet been
`decided and/or addressed by the Federal Circuit, IGT’s requested
`authorization is premature. Accordingly, at this time, no motion to terminate
`is authorized.
`
`b. Motion to Stay
`IGT also indicated that it seeks authorization to file a motion to stay
`each of the related IPR proceedings for six months. IGT represented to the
`panel that such a motion is warranted pending the outcome of: (1) the
`above-noted Husky proceeding; (2) Cuozzo Speed Technologies, LLC v. Lee,
`136 S. Ct. 890 (2016) (No. 15-446), which presently is awaiting a decision
`from the Supreme Court; and (3) a remand by the Federal Circuit to the
`district court concerning the related district court proceeding. Aristocrat
`indicated that it opposed authorization of a motion to stay.
`By statute, a final determination in an inter partes review proceeding
`must “be issued not later than 1 year after the date on which the Director
`notices the institution of a review.” 35 U.S.C. § 316(a)(11). Although the
`Director may extend the 1-year period “by not more than 6 months,” a party
`seeking such extension must show “good cause” why that action is
`warranted. 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.5(c)(2).4 Here, whether
`the outcome of any of these cases will influence or impact the present related
`
`
`4 IGT’s requested motion for stay of the related IPR proceedings is
`tantamount to a request for extension of time.
`2
`
`
`
`
`IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-00307
`Patents 6,375,570 B1, 6,702675 B2, 7,303,469 B2
`
`IPR proceedings is nothing short of speculation. Indeed, we note that at
`least the first two proceedings do not involve the patents underlying the
`related IPR proceedings, and IGT did not represent that the district court was
`going to take any particular action at any particular time. Moreover, it also
`is not apparent that a decision in any of those cases necessarily would
`provide guidance in disposing of any issue that is present in the particular
`related IPR proceedings involved here. We do not discern that the
`speculative potential of some possible outcome that is germane to the related
`IPR proceedings lends itself reasonably to a conclusion that IGT can
`demonstrate “good cause” for the extraordinary relief that it would seek, i.e.,
`a preemptive, maximum contemplated extension of an inter partes review
`proceeding.
`Furthermore, we note that trial is underway in each of the related IPR
`proceedings, and resolution of those trials, in some fashion, must occur. To
`the extent that a decision from any of the Supreme Court, Federal Circuit, or
`district court may impact any of these related IPR proceedings, it is not
`apparent why such impact cannot be assessed at the time it manifests
`without the need for a stay. We conclude, at this time, that the trials should
`proceed based on the Scheduling Order that was initially set in each of the
`related IPR proceedings. We do not authorize a motion to stay.
`
`3. Order
`
`It is
`ORDERED that no motion to terminate or motion to stay is
`authorized as this time; and
`
`3
`
`
`
`
`IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-00307
`Patents 6,375,570 B1, 6,702675 B2, 7,303,469 B2
`
`FURTHER OREDERED that the trials of the related IPR proceedings
`
`will continue based on the Scheduling Order presently in place in each
`proceeding.5
`
`
`
`5 Those Scheduling Orders lay out Due Dates 1–7 for each proceeding. As
`noted in those Scheduling Orders, the parties are free to stipulate to changes
`to Due Dates 1–5 (see, e.g., IPR2016-00181, Paper 8, 5).
`4
`
`
`
`
`IPR2016-00181; IPR2016-00182; IPR2016-00252;
`IPR2016-00305; IPR2016-00307
`Patents 6,375,570 B1, 6,702675 B2, 7,303,469 B2
`
`
`For PETITIONER:
`
`Andrea G. Reister
`Jay I. Alexander
`COVINGTON & BURLING LLP
`areister@cov.com
`jalexander@cov.com
`
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Michelle K. Holoubek
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`mholoubek-PTAB@skgf.com
`
`
`
`
`
`
`5
`
`
`
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