Trials@uspto.gov
`571-272-7822
`
`
`
`IPR2013-00194, Paper No. 33
`IPR2013-00195, Paper No. 27
`CBM2013-00013, Paper No.34
`Date Entered: February 3, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case No. IPR2013-00194
`Patent 8,108,492 B2
`Case No. IPR2013-00195
`Patent 5,987,500
`Case No. CBM2013-00013
`Patent 8,037,158 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER TO CORRECT PAPERS
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`571-272-7822
`
`
`
`IPR2013-00194, Paper No. 33
`IPR2013-00195, Paper No. 27
`CBM2013-00013, Paper No.34
`Date Entered: February 3, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case No. IPR2013-00194
`Patent 8,108,492 B2
`Case No. IPR2013-00195
`Patent 5,987,500
`Case No. CBM2013-00013
`Patent 8,037,158 B2
`____________
`
`
`
`Before KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER TO CORRECT PAPERS
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`Cases IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patents 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`
`
`On January 31, 2014, the Board conducted a teleconference with the parties
`to consider a request by SAP America, Inc. (“Petitioner”) for authorization to file a
`motion to strike Exhibit C of a Motion to Amend filed by Pi-Net International, Inc.
`(“Patent Owner”) in IPR2013-00194 (Paper 31) and in IPR2013-00195 (Paper 26)
`(collectively, “Motions To Amend”), as improperly circumventing the 18 pages1
`allocated to Patent Owner for the motions. Petitioner also sought authorization to
`file a motion to strike the declarations of litigation experts Bardash and Easttom in
`Patent Owner’s Response and/or Motions to Amend as lacking relevance.
`Petitioner also requested the conference to discuss Patent Owner’s confusing
`labeling of exhibits. Finally, Petitioner asked to discuss references in the Motions
`To Amend and, in the corresponding Patent Owner’s Response, to exhibits that
`Patent Owner did not upload through PRPS, including exhibits designated R25,
`R43, R44, R46 and R52.2
`During the conference, it quickly became clear that the incorrect labeling of
`Patent Owner’s exhibits limited the scope of substantive conversations that could
`be conducted. The incorrect exhibit labeling occurred in IPR2013-00194,
`IPR2013-00195 and CBM2013-00013. The Board authorized Patent Owner to file
`correctly designated exhibits and corrected papers referencing those exhibits in all
`three proceedings within 5 calendar days from January 31, 2014, i.e., by February
`5, 2014. No substantive changes are authorized.
`
`
`1 On January 17, the Board authorized Patent Owner to exceed the 15 page limit
`imposed under 37 C.F.R. § 42.24(a)(1)(v), permitting up to 18 pages in each case.
`IPR2013-00194, Paper 30; IPR2013-00195, Paper 23.
`2 We note that these exhibit designations would not be proper exhibit numbers for
`Patent Owner in this proceeding.
`
`
`
`2
`
`
`
`Cases IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patents 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`
`The Motions To Amend filed by Patent Owner exceed the authorized page
`limit. In addition, they include Exhibit C. Exhibit C is a lengthy chart which
`purports to identify the support in the specification for the proposed amendment.
`Exhibit C in the IPR2013-00194 Motion To Amend is 91 pages. Exhibit C in the
`IPR2013-00195 Motion To Amend is 62 pages. The Board advised the parties that
`Exhibit C in each case is improper. As we advised Patent Owner in the conference
`prior to filing, the body of the Motion To Amend must set forth the support in the
`original disclosure for the amended claim. Merely designating in a table where
`each claim limitation is described in the original disclosure may be insufficient to
`demonstrate support of the claimed subject matter as a whole. IPR2013-00194,
`Paper 27, IPR2013-00195, Paper 20. During the teleconference on January 31,
`2014, Patent Owner offered to correct the Motions To Amend to address the page
`limit issues. Petitioner opposed, arguing that it already had agreed to several
`extensions of the due date for filing of the Patent Owner Response and the Motion
`To Amend.
` The Board noted that the record is such that it cannot properly evaluate
`Patent Owner’s pleadings, but is also cognizant that further delays could prejudice
`Petitioner. Therefore, the Board authorized Patent Owner to file a corrected
`Motion To Amend in IPR2013-00194 and IPR2013-00195 within 5 calendar days
`of January 31, 2014 teleconference. Petitioner is not authorized to file a motion to
`strike. The Board will evaluate the Motions To Amend and decide whether they
`comply with the rules.
`During the conference, Petitioner also raised its objections to the Bardash
`and Easttom declarations. Petitioner argues that these declarations are irrelevant
`because they are taken from the district court litigation, where the applicable
`standards differ from those applied by the Board. Patent Owner offered to
`
`
`
`3
`
`
`
`Cases IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patents 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`withdraw the declarations and substitute another declaration concerning the level
`of skill in the art. Patent Owner suggested that the parties discuss an acceptable
`compromise outside the conference. Patent Owner is reminded that no substantive
`changes are permitted to the Motion To Amend.
`Petitioner is not authorized to file a motion to strike the Bardash and
`Easttom declarations. However, Petitioner may consider filing a motion to exclude
`the evidence at an appropriate time.
`Finally, there was disagreement during the conference about whether
`exhibits had been mentioned in Patent Owner’s pleadings and not uploaded or
`whether any exhibits actually relied upon by the Patent Owner were not uploaded.
`The Patent Owner must upload as exhibits all documents cited in its papers and
`must correct all uploading errors within 5 calendar says of the January 31, 2014
`teleconference.
`Patent Owner is advised that any document which fails to comply with the
`Board’s rules will be expunged.
`
`It is ORDERED that Patent Owner shall file correctly designated exhibits
`and corrected papers referencing those exhibits in IPR2013-00194, IPR2013-
`00195, and CBM2013-00013 not later than February 5, 2014. No substantive
`change to any paper is authorized and Patent Owner must represent that no
`substantive changes have been made;
`it is FURTHER ORDERED that Patent Owner file a corrected Motion To
`Amend not to exceed 18 pages in IPR2013-00194 and IPR2013-00195 not later
`than February 5, 2014. No substantive changes to the Motions To Amend are
`authorized and Patent Owner must represent that no substantive changes have been
`made;
`
`
`
`4
`
`
`
`Cases IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patents 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`
`it is FURTHER ORDERED that Patent Owner upload all references cited in
`any pleading not later than February 5, 2014;
`it is FURTHER ORDERED that any paper filed by Patent Order that is not
`in compliance with the Board’s rules and procedures will be expunged;
`it is FURTHER ORDERED that Petitioner is not authorized to file any
`motion to strike.
`
`
`PETITIONER:
`
`
`Lori A. Gordon
`Lgordon-PTAB@skgf.vom
`
`
`Michael Q. Lee
`Mlee-PTAB@skgf.com
`
`PATENT OWNER:
`
`
`Bryan Boyle
`bboyle@carrferrell.com
`
`
`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
`
`
`Gerald Dodson
`jdodson@carrferrell.com
`
`
`
`
`
`
`5
`
`
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