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Xerox Corporation v. Midwest Athletics and Sports Alliance LLC

Docket IPR2019-00425, Patent Trial and Appeal Board (Dec. 13, 2018)
Jon Jurgovan, Kimberly McGraw, Michelle Ankenbrand, Richard Marschall, presiding
Case TypeInter Partes Review
Patent7502582
Patent Owner Midwest Athletics and Sports Alliance LLC
Petitioner Xerox Corporation
Patent Owner Sports Alliance
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11 Refund Approval: Notice of Refund

Document IPR2019-00425, No. 11 Refund Approval - Notice of Refund (P.T.A.B. Oct. 28, 2019)
Petitioner’s request for a refund of certain post-institution fees paid on December 13, 2018 in the above proceeding is hereby granted.
The amount of $15,000.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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9 Institution Decision: Decision Denying Institution of Inter Partes Review

Document IPR2019-00425, No. 9 Institution Decision - Decision Denying Institution of Inter Partes Review (P.T.A.B. Jul. 9, 2019)
Nonetheless, Petitioner contends Richards, which teaches methods of improving the gloss of an image, discloses the preamble.
Thus, none of Haneda, Johnson, and Ng ’783 discloses five toner development stations with five different pigments used to produce a pentachrome image as claimed.
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7 Order: ORDER Conduct of the Proceedings

Document IPR2019-00425, No. 7 Order - ORDER Conduct of the Proceedings (P.T.A.B. Jun. 6, 2019)
This rule provides that a petitioner may seek leave to file a reply to the preliminary response, but is required to make a showing of good cause.
On June 5, 2019, a conference call was held with Judges Ankenbrand, Jurgovan, McGraw, and Marschall, and respective counsel for the parties.
During the call, Petitioner requested authorization to file a Reply to Patent Owner’s Preliminary Response in each case to address Patent Owner’s allegedly inconsistent claim constructions in district court (set forth in infringement contentions), which, according to Petitioner, bear on the instant proceedings.
In response, Patent Owner argued that its infringement contentions are preliminary in nature, a matter for the district court, and will not be helpful to the Board in construing the disputed claim terms or deciding whether to institute an inter partes review in any of the cases.
Upon consideration of the parties’ positions, we find Petitioner has not established good cause for further briefing and, thus, we deny Petitioner’s request to file Replies to Patent Owner’s Preliminary Responses in each case.
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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2019-00425, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Jan. 10, 2019)
Patent Owner may file a preliminary response to the petition no later than three months from the date of this notice.
Patent Owner may also file an election to waive the preliminary response to expedite the proceeding.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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10 Refund Request: Petitioners Request for Refund

Document IPR2019-00425, No. 10 Refund Request - Petitioners Request for Refund (P.T.A.B. Oct. 8, 2019)
On July 9, 2019, the Patent Trial and Appeal Board denied institution of the Inter Partes Review of US.
Accordingly, Petitioner requests a refund of the post—institution fee of $15 ,000.00 that was previously charged on a deposit account.
Accordingly, Petitioner requests a refund in the amount of $15,000.00 for the post-institution fee that it has paid to the USPTO in connection with this proceeding.
/Trevor M. O’Neill/ Trevor M. O’Neill (Reg. No. 72,981) STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C. Attorney for Petitioner Xerox Corporation Date: October 8, 2019 1100 New York Avenue, NW.
The undersigned hereby certifies that the foregoing PETITIONER’S REQUEST FOR REFUND OF THE POST-INSTITUTION FEE was served electronically via e—mail on October 8, 2019, in its entirety on the following: James Hannah (Lead Counsel) Jeffrey H. Price (Back-up Counsel) Mark A. Baghdassarian (Back—up Counsel) KRAMER LEVIN NAFTALIS & FRANKEL LLP jhannah @ kramerlevin.corn j p_rice @ kra1nerlevin.c01n mbaghdassarian @ krarnerlevin .com svdocketing @ krarnerlevin .com STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C. /Trevor M. O’Neill/ Trevor M. O’Neill (Reg. No. 72,981)
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2 Petition: Petition

Document IPR2019-00425, No. 2 Petition - Petition (P.T.A.B. Dec. 13, 2018)
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8 Exhibit List: Petitioners Updated Exhibit List

Document IPR2019-00425, No. 8 Exhibit List - Petitioners Updated Exhibit List (P.T.A.B. Jun. 11, 2019)
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