Trials@uspto.gov
`571-272-7822
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` Paper 11
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`Date: August 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HARVEST TRADING GROUP, INC.,
`Petitioner,
`
`v.
`
`VIREO SYSTEMS, INC.,
`Patent Owner.1
`
`
`
`Case IPR2016-00945 (Patent 8,354,450 B2)
`Case IPR2016-00947 (Patent 8,962,685 B2)2
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and ZHENYU YANG, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Act to the Exclusion of a Co-Owner
`37 C.F.R. § 42.9(b)
`
`
`1 Vireo Systems, Inc. is the only patent owner who has filed mandatory
`notices.
`2 This Decision employs a joint caption, as it is being entered in both
`matters. The parties may not use a joint caption unless authorized.
`
`
`571-272-7822
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`
`
`
`
` Paper 11
`
`Date: August 16, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HARVEST TRADING GROUP, INC.,
`Petitioner,
`
`v.
`
`VIREO SYSTEMS, INC.,
`Patent Owner.1
`
`
`
`Case IPR2016-00945 (Patent 8,354,450 B2)
`Case IPR2016-00947 (Patent 8,962,685 B2)2
`
`
`
`
`Before JACQUELINE WRIGHT BONILLA, MICHAEL J. FITZPATRICK,
`and ZHENYU YANG, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Act to the Exclusion of a Co-Owner
`37 C.F.R. § 42.9(b)
`
`
`1 Vireo Systems, Inc. is the only patent owner who has filed mandatory
`notices.
`2 This Decision employs a joint caption, as it is being entered in both
`matters. The parties may not use a joint caption unless authorized.
`
`
`
`IPR2016-00945 (Patent 8,354,450 B2)
`IPR2016-00947 (Patent 8,962,685 B2)
`
`
`Petitioner, Harvest Trading Group, Inc., filed Petitions to institute
`inter partes reviews of claims of U.S. Patent Nos. 8,354,450 B2 and
`8,962,685 B2.
`
` Vireo Systems, Inc. (“Vireo”), who identifies itself as a co-owner of
`each patent, filed a power of attorney in both matters. IPR2016-00945,
`Paper 5; IPR2016-00947, Paper 4. In both matters, Vireo also filed a
`Motion, pursuant to 37 C.F.R. § 42.9(b), “to act to the exclusion of patent
`co-owner, Board of Regents of the University of Nebraska (‘University’)
`and UNeMed Corporation (‘UNeMed’), as holder of all of University’s
`substantial rights” in the challenged patents. IPR2016-00945, Paper 6;
`IPR2016-00947, Paper 6. On August 12, 2016, a conference call was held to
`discuss the Motions.
`
`Rule 42.9(b) provides:
`
`An owner of a part interest in the subject patent may move to act
`to the exclusion of an inventor or a co-owner. The motion must
`show the inability or refusal of an inventor or co-owner to
`prosecute the proceeding or other cause why it is in the interests
`of justice to permit the owner of a part interest to act in the trial.
`In granting the motion, the Board may set conditions on the
`actions of the parties.
`
`37 C.F.R. § 42.9(b).
`
`Vireo’s Motions do not demonstrate inability or refusal by either
`University or UNeMed to prosecute the proceeding and do not otherwise
`show why granting the Motions would be in the interests of justice.
`
`2
`
`
`
`IPR2016-00945 (Patent 8,354,450 B2)
`IPR2016-00947 (Patent 8,962,685 B2)
`
`
`The Motions are supported by a declaration from Michael Dixon
`appended to each Motion as “Exhibit A.”3 However, Mr. Dixon offer his
`testimony only on behalf of UNeMed and not on behalf of University. See,
`e.g., IPR2016-00945, Paper 6 at “Exhibit A” ¶ 2.
`
`In most relevant part, he testifies:
`
`6. UNeMed voluntarily consents to Vireo prosecuting IPR
`proceedings IPR2016-00945 and IPR2016-00947, filed by
`Harvest Trading Group, Inc. against Vireo and UNeMed, to the
`exclusion of UNeMed.
`7. UNeMed believes that its interests will be adequately
`represented by Vireo, and that Vireo acting to the exclusion of
`UNeMed in IPR proceedings IPR2016-00945 and IPR2016-
`00947 is in the interests of justice and efficiency.
`
`Id. at ¶¶ 6–7. This testimony does not establish that UNeMed (let alone
`University) is unable to participate or that it refuses to participate. Nor does
`this testimony explain how proceeding without UNeMed (or University) is
`in the interests of justice. The testimony demonstrates a preference by
`UNeMed to not participate, but not an inability or refusal to do so.
`
`Vireo’s Motions are denied without prejudice. Any new motion Vireo
`wishes to file under 37 C.F.R. § 42.9(b) should offer sufficient evidence and
`
`
`3 Evidence must not be submitted as a paper, or as part of a paper. See 37
`C.F.R. § 42.63(a) (“All evidence must be filed in the form of an exhibit.”).
`Additionally, exhibits must be numbered in compliance with 37 C.F.R.
`§ 42.63(c) (“Each party’s exhibits must be uniquely numbered sequentially
`in a range the Board specifies. For the petitioner, the range is 1001–1999,
`and for the patent owner, the range is 2001–2999.”).
`3
`
`
`
`IPR2016-00945 (Patent 8,354,450 B2)
`IPR2016-00947 (Patent 8,962,685 B2)
`
`
`argument that any co-owner sought to be excluded is unable or refusing to
`participate, or that it is in the interests of justice to so exclude such co-
`owner.
`
`Alternatively, and as discussed during the conference call, it may be
`more practical for each co-owner to file mandatory notices pursuant to 37
`C.F.R. § 42.8 and a power of attorney pursuant to 37 C.F.R. § 42.10.
`Thereafter, any such co-owner need not file its own substantive papers and
`evidence, instead relying on Vireo to advance its interests with respect to the
`patents.
`
`Accordingly, it is
`
`ORDERED that Vireo’s Motions, filed pursuant to 37 C.F.R.
`§ 42.9(b), (i.e., Paper 6 in each matter) are denied without prejudice; and
`
`FURTHER ORDERED that Vireo may file a new motion pursuant to
`37 C.F.R. § 42.9(b) in each matter on or before August 26, 2016.
`
`4
`
`
`
`IPR2016-00945 (Patent 8,354,450 B2)
`IPR2016-00947 (Patent 8,962,685 B2)
`
`
`For Petitioner:
`
`Raymond Miller
`millerra@pepperlaw.com
`
`Curtis Wadsworth
`wadsworc@pepperlaw.com
`
`For Patent Owner:
`
`Stephen Hall
`shall@bradley.com
`
`Jake Neu
`jneu@bradley.com
`
`
`
`
`
`
`5
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