Trials@uspto.gov
`571-272-7822
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`
`
` Paper 13
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`Entered: January 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WAVETAMER GYROS, LLC,
`Petitioner,
`
`
`
`
`
`v.
`
`SEAKEEPER, INC.,
`Patent Owner.
`____________
`Cases IPR2017-01931 and IPR2017-019961
`Patents 8,117,930 B2 and 7,546,782 B2
`____________
`
`Before LORA M. GREEN, MICHAEL W. KIM, and PATRICK R. SCANLON,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`ORDER
`Dismissing the Petition
`37 C.F.R. § 42.71(a)
`
`
`
`
`
`
`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 authorized
`to use this style heading when filing a single paper in the listed proceedings,
`provided that such heading includes a footnote attesting that “numbering aside, the
`word-for-word identical paper is filed in each proceeding identified in the
`heading.”
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`Petitioner filed Motions to Dismiss the Petitions2 in these proceedings on
`December 18, 2017 (Paper 9 in IPR2017-01931, Paper 8 in IPR2017-019963), as
`authorized by the Board in a paper dated December 11, 2017 (Paper 8; “Order”).
`The Motions to Dismiss also seek authorization to file corrected petitions in new
`proceedings. As also authorized by the Board in its Order, Patent Owner filed
`Oppositions to Petitioner’s Motions to Dismiss on December 26, 2017. Paper 12.
`
`In its Motions to Dismiss, Petitioner describes how the Adams Patent, Patent
`No. US 6,973,847 (Ex. 1006), rather than the Adams Publication, Pub. No. US
`2004/0244513 (Ex. 1043, filed with Petitioner’s Motions to Dismiss), was relied
`upon in challenging the claims of U.S. Patent No. 8,117,930 (“the ’930 patent”)
`and U.S. Patent No. 7,546,782 (“the ’782 patent). Paper 9, 1; see id. at 2‒3. The
`Adams Patent was relied upon by Petitioner in all of its challenges of the ’930
`patent, and serves as the basis “for the strongest grounds” challenging the ’782
`patent. Id. at 1‒2. According to Petitioner, although the Adams Publication is
`prior art to the patent challenged in these proceedings under 35 U.S.C. § 102, the
`Adams Patent is not prior art to the challenged patents. Id. at 1.
`
`
`2 We note that Petitioner and Patent Owner filed the first page of our order of
`December 11, 2017 (Paper 8) as the first page of the Motion to Dismiss (Paper 9)
`and the Opposition of the Motion to Dismiss (Paper 12), as well as the
`Declarations filed by Petitioner accompanying its Motion to Dismiss (Papers 10
`and 11). The parties should not use the first page of our order as the first page of
`their orders and declarations, as it makes it unclear who is the author of the paper,
`as the front page of our order indicates both the panel and the author of the order.
`The parties should consult with Trials@uspto.gov if they have additional questions
`as to the proper formatting of their cover pages. In addition, the Declarations
`accompanying Petitioner’s Motions to Dismiss should have been filed as petitioner
`exhibits, and not papers.
`3 We will refer only to the papers and exhibits in IPR2017-01931 hereinafter.
`
`
`
`2
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`Patent Owner responds that “[i]t would be unjust to allow [Petitioner] to
`
`escape the consequences of its flawed petitions, especially when those flaws have
`been identified to the Board by [Patent Owner’s] legal work.” Paper 12, 1. In
`addition, Patent Owner contends that “[w]hether [Petitioner’s] follow-on petitions
`should be allowed to proceed in light of General Plastic and 35 U.S.C. § 325(d) is
`a question that should be addressed by the Board if and when [Petitioner] files such
`follow-on petitions.” Id. at 8.
`37 C.F.R. § 42.71(a) states that “[t]he Board may take up petitions . . . in any
`order, [and] may . . . dismiss any petition.” Under these circumstances, we grant
`the requests of Petitioner to dismiss the Petitions and terminate these proceedings.
`Terminating the proceeding at this stage increases the efficiency of the Board and
`the parties, as Patent Owner need not file a Preliminary Response in IPR2017-
`01996, and we need not address challenges that are based on a reference that
`Petitioner admits is not prior art to the challenged patents in a decision on
`institution.
`
`We note further that both Petitioner and Patent addressed the factors set
`forth in Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357, (PTAB September 6, 2017) (Paper 19) (precedential), which sets forth a
`non-exhaustive list of factors (“General Plastics factors”) the Board takes into
`consideration in evaluating follow-on petitions. See Paper 9, 8‒10; Paper 12, 9-10.
`We agree with Patent Owner (Paper 12, 8) that it would be premature, however, to
`address those factors in these proceedings, and at this time. As we stated in our
`Order authorizing the briefing as to why dismissal is appropriate, “Petitioner
`should consider addressing those factors when it refiles its petitions.” Order 3.
`Thus, although Petitioner is certainly free to refile new petitions and proceedings
`challenging the ’930 and ’782 patents, the appropriate place for both Petitioner and
`
`
`
`3
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`Patent Owner to address those General Plastics factors, as to why or why not the
`follow-on Petitions are appropriate in these circumstances, is in those new
`proceedings themselves.
`This paper does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`
`Accordingly, it is:
`
`ORDERED that the Petitioner’s requests to terminate these proceedings is
`granted; and
`
`FURTHER ORDERED that the Petitions in these proceedings are dismissed.
`
`
`
`
`
`4
`
`

`

`IPR2017-01931 and IPR2017-01996
`Patents 8,117,930 B2 and 7,546,782 B2
`
`
`For Petitioner:
`
`David E. Bennett
`Brandee N. Woolard
`COATS & BENNETT, PLLC
`dbennett@coatsandbennett.com
`bwoolard@coatsandbennett.com
`
`
`For Patent Owner:
`
`Edward J. Kelly
`Regina Sam Penti
`ROPES & GRAY LLP
`Edward.Kelly@ropesgray.com
`Regina.Penti@ropesgray.com
`
`
`
`5
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`