`571-272-7822 Entered: April 26, 2013
`
`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 CBM2013-00013
`Patent 8,037,158
`____________
`
`
`
`
`Before, Karl D. Easthom, Joni Y, Chang, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER DENYING PETITIONER’S REQUEST FOR AUTHIZATION TO
`FILE MOTION TO ACCELERATE THE TIME FOR PATENT OWNER
`TO FILE A PATENT OWNER’S PRELIMINAY RESPONSE
`
`Conduct of the Proceeding
`37C.F.R. 42.5
`
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`
`Counsel for SAP America, Inc. (Petitioner) requested a conference call with
`
`the panel to occur April 18, 2013 to discuss accelerating a decision on instituting a
`
`proceeding in each of the following matters: IPR2013-00194, IPR2013-00195,
`
`and CBM2013-00013 (the Subject Proceedings). Following several attempts to
`
`arrange an alternate time, the call occurred on April 25, 2013. Petitioner was
`
`represented by lead counsel Michael Lee, Patent Owner was represented by lead
`
`counsel Bryan Boyle. Other representatives of each party also were present on the
`
`call.
`
` During the April 25, 2013 teleconference, Petitioner requested authorization
`
`to file a motion to accelerate by 30 to 45 days the time permitted under 37 C.F.R.
`
`§ 42.107(b) for Pi-Net International, Inc. (Patent Owner) to file a Patent Owner’s
`
`Preliminary Response in each of the Subject Proceedings. Petitioner argued that,
`
`in view of Patent Owner’s currently pending 24 district court patent infringement
`
`suits against 27 defendants, Patent Owner is aware of the relevant issues and would
`
`not be prejudiced by accelerating the date for filing a Patent Owner’s Preliminary
`
`Response, particularly when one considers that the three Subject Proceedings
`
`involve only 31 claims, 6 primary references, 3 secondary references, and admitted
`
`prior art.
`
`Patent Owner countered that it would prejudiced by accelerating the date
`
`because responding to the Petitioner’s multiple petitions requires significant time,
`
`
`
`2
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`especially in view of a 245 page expert’s declaration filed by Petitioner. Patent
`
`Owner also noted that the time required to oppose a motion to accelerate the time
`
`would distract from the effort required to prepare and file its Patent Owner’s
`
`Preliminary Response in the Subject Proceedings.
`
`Petitioner filed the petitions for IPR2013-00194 and IPR2013-00195 on
`
`March 18, 2013 and the petition for CBM2013-00013 on March 22, 2013. More
`
`than a month has elapsed since Petitioner filed the petitions for the Subject
`
`Proceedings. Under 37 C.F.R. § 42.107(b), a Patent Owner’s Preliminary
`
`Response may be filed in IPR2013-000194 and IPR2013-000195 not later than
`
`June 20, 2013 (56 days from the date of the April 25 teleconference). A Patent
`
`Owner’s Preliminary Response may be filed in CBM2013-00013 not later than
`
`June 27, 2013 (63 days from the April 25, 2013 teleconference). Accelerating the
`
`date for Patent Owner to file a Patent Owner’s Preliminary Response by 45 days
`
`would move the current due dates to May 6, 2013 for IPR2013-00194 and 00195
`
`(only 11 days from the date of the April 25, 2013 teleconference) and May 13,
`
`2013 for CBM2013-00013 (only 18 days from the date of the teleconference).
`
`Accelerating the date for Patent Owner to file a Patent Owner’s Preliminary
`
`Response by 30 days would move the current due dates to May 21, 2013 for
`
`IPR2013-00194 and 00195 (26 days from the date of the April 25, 2013
`
`teleconference) and May 28, 2013 for CBM2013-00013 (33 days from the date of
`
`
`
`3
`
`
`
`Case CBM2013-00013
`Patent 8,037,158
`
`the teleconference). These time frames do not take into account the amount of
`
`time required to file and oppose a motion to accelerate.
`
`Because a month has already elapsed since Petitioner filed its petitions and
`
`given the existence of multiple proceedings with due dates in close proximity of
`
`time, there is limited time remaining for Patent Owner to prepare and file a
`
`Preliminary Patent Owner’s Response. Accelerating the due dates as requested by
`
`Petitioner could prejudice Patent Owner and would not significantly expedite the
`
`Subject Proceedings.
`
`Therefore, it is ORDERED that Petitioner’s request for authorization to file
`
`a motion to accelerate the time required for Patent Owner to file a Patent Owner’s
`
`Preliminary Response is denied.
`
`
`PETITIONER: (via electronic transmission)
`
`Lori A. Gordon
`Lgordon-PTAB@skgf.vom
`Michael Q. Lee
`Mlee-PTAB@skgf.com
`
`
`PATENT OWNER: (via electronic transmission)
`
`Bryan Boyle
`bboyle@carrferrell.com
`Gerald Dodson
`jdodson@carrferrell.com
`
`
`
`
`4
`
`
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