Trials@uspto.gov Paper No. 10 IPR2013-00194 Paper 56
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`571-272-7822
`IPR2013-00195 Paper 49
`CBM2013-00013 Paper 49
`Date Entered: May 23, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case IPR2013-00194
`Patent 8,108,492
`Case IPR2013-00195
`Patent 5,987,500
`Case CBM2013-00013
`Patent 8,037,1581
`___________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`1 This Order addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
`
`

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`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`
`A trial in each of IPR2013-00194, IPR2013-00195, and CBM2013-00013,
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`(“the subject proceedings’), which are related, was instituted on September 19,
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`2013. In each proceeding, we issued a Scheduling Order setting the date for a
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`consolidated oral hearing to occur on June 16, 2014, if hearing was requested by
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`the parties and granted by the Board. Both parties requested oral hearing pursuant
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`to 37 C.F.R. § 42.70. For the reasons discussed below, we grant the requests for
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`oral hearing.
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`On May 14, 2014, in Pi-Net International, Inc. v. JPMorgan Chase & Co.,
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`Case No. 1:12-cv-00282 (D. Del.), the district court issued a claim construction
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`order and opinion concluding that certain claim terms are indefinite and an order
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`and opinion granting defendant’s motion for summary judgment on the basis that
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`all of the patents involved in this proceeding, i.e., U.S. Patent No. 8,108,492, U.S.
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`Patent No. 5,987,500 and U.S. Patent No. 8,037,185 (“the subject patents”), are
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`invalid. On May 19, 2014, the court entered judgment for defendant, JPMorgan
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`Chase, who is not a party in the subject proceedings. On May 21, 2014, Patent
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`Owner filed a Notice of Appeal, appealing the district court’s claim construction
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`and summary judgment.
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`In view of the actions in the district court, the parties requested a conference
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`with the Board. The conference was held on May 22, 2014 during which SAP
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`America, Inc. (“Petitioner”) was represented by Lori Gordon and Michael Lee and
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`Pi-Net International, Inc. (“Patent Owner”) was represented by Tam Pham and
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`Colby Springer. Judges McNamara, Easthom and Saindon participated in the
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`conference
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` Patent Owner suggests that, as a matter of judicial efficiency, the subject
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`proceedings before the Board be stayed pending a decision on its appeal to the
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`Federal Circuit Court of Appeals. Petitioner opposes a stay, arguing that it was not
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`
`
`2
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`

`

`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`a party to the district court case, that the district court decision was not pursuant to
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`another proceeding before the Office under 35 U.S.C. § 315(d), and that an
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`extension for the maximum six months under 35 U.S.C. 316(a)(11) would not
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`provide sufficient time for a determination of Patent Owner’s appeal of the district
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`court’s decision.
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`We recognize both the importance of the district court’s decision and the
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`circumstances concerning Patent Owner’s appeal, and we will give the district
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`court’s decision due consideration. However, except to the extent that they may
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`implicate our ultimate claim construction, the issues addressed by the district court
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`under 35 U.S.C. § 112 are not before us in inter partes review IPR2013-00194 and
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`IPR2013-00195. The indefiniteness issues under 35 U.S.C. § 112 before us in
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`CBM2013-00013 overlap with those addressed in the district court’s decision to
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`some extent. However, as with the inter partes reviews, we also instituted
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`CBM2013-00013 on grounds other than those addressed by the district court’s
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`decision.
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`We also note that the subject proceedings apply different standards of claim
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`construction and a different burden of proof than that applied by the district court.
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`Thus, although an affirmance of the district court’s decision that the subject patents
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`are invalid could terminate the subject proceedings, or an appeal of the outcome of
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`the subject proceedings, a reversal of the district court’s invalidity determination
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`might not affect our decisions. In view of these circumstances, we do not
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`authorize a motion to stay the subject proceedings and we will conduct an oral
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`hearing, as scheduled, on June 16, 2014.
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` Petitioner has indicated that it is considering withdrawing its request for
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`oral hearing and proposes that such withdrawal would limit the subject matter of
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`3
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`

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`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`the oral hearing to Patent Owner’s motions to amend.2 However, we need not
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`reach Patent Owner’s motions to amend, unless we determine that the challenged
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`claims are unpatentable. In each of IPR2013-00194 and IPR2013-00195, we
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`instituted a trial after having been persuaded that the information presented in the
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`petition and the preliminary response shows that there is a reasonable likelihood
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`that Petitioner would prevail with respect to at least one of the claims challenged in
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`the petition. 35 U.S.C. § 314. In CBM2013-00013, we instituted a trial having
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`been persuaded that, if the information in the petition was not rebutted, the
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`information would more likely than not demonstrate that at least one of the
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`challenged claims is unpatentable. 35 U.S.C. § 324(a). Briefing is complete on all
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`issues for which the Board instituted the trial. In view of our initial
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`determinations, the Board will hear argument on all issues, including Patent
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`Owner’s response to the bases on which we instituted trial, whether or not
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`Petitioner withdraws its request for hearing or declines to appear at the hearing.
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`Each party will have 90 minutes of total argument time. Petitioner bears the
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`ultimate burden of proof that the claims at issue in these proceedings are
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`unpatentable and on its motions to exclude.3 Therefore, at oral hearing Petitioner
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`will proceed first to present its case with regard to the challenged claims on which
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`basis we instituted trial and on its motion to exclude in each proceeding.
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`Thereafter, Patent Owner will respond to Petitioner’s case. Patent Owner will also
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`present its own case with regard to any motion to amend claims, as Patent Owner
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`bears the burden of proof on its motion to amend claims. After that Petitioner will
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`make use of the rest of its time responding to Patent Owner on all issues. Finally,
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`2 Patent Owner filed motions to amend in IPR 2013-00194 and IPR2013-00195.
`3 Petitioner filed a motion to exclude in each of the subject proceedings.
`4
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`

`

`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`Patent Owner will take its turn, but only addressing issues concerning its motion to
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`amend claims.
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`There is a strong public policy interest in making all information presented
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`in these proceedings public, as the review determines the patentability of claims in
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`an issued patent and thus affects the rights of the public. This policy is reflected in
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`part, for example, in 35 U.S.C. § 316(a)(1) and 35 U.S. C. § 326(a)(1), which
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`provide that the file of any inter partes review or post grant review be made
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`available to the public, except that any petition or document filed with the intent
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`that it be sealed shall, if accompanied by a motion to seal, be treated as sealed
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`pending the outcome of the ruling on the motion.
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`There are no motions to seal in the present proceeding. Accordingly, the
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`Board exercises its discretion to make the oral hearing publically available via in-
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`person attendance.
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`Specifically, the hearing will commence at 1:00 PM, on June 16, 2014, and
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`it will be open to the public for in-person attendance, on the ninth floor of Madison
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`Building East, 600 Dulany Street, Alexandria, Virginia. In-person attendance will
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`be accommodated on a first come first serve basis. The Board will provide a court
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`reporter for the hearing and the reporter’s transcript will constitute the official
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`record of the hearing
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served five
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`business days before the hearing and filed at the Board no later than at the time of
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`the hearing. The parties are directed to CBS Interactive Inc. v. Helferich Patent
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`Licensing, LLC, IPR2013-00033, Paper 118 (Oct. 23, 2013), regarding the
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`appropriate content of demonstrative exhibits. The parties are reminded that the
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`presenter must identify clearly and specifically each demonstrative exhibit (e.g., by
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`slide or screen number) referenced during the hearing to ensure the clarity and
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`5
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`

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`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`accuracy of the reporter’s transcript. Questions regarding specific audio-visual
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`equipment should be directed to the Board at (571) 272-9797. Any issue regarding
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`demonstrative exhibits should be resolved at least two days prior to the hearing by
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`way of a joint telephone conference call to the Board. The parties are responsible
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`for requesting such a conference sufficiently in advance of the hearing to
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`accommodate this requirement. Any objection to demonstrative exhibits that is not
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`timely presented will be considered waived.
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`The Board expects lead counsel for each party to be present in person at the
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`oral hearing. However, lead or backup counsel may present the party’s argument.
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`If either party anticipates that its lead counsel will not be attending the oral
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`argument, the parties should initiate a joint telephone conference with the Board no
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`later than two business days prior to the oral hearing to discuss the matter.
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`
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`PETITIONER:
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`Lori Gordon
`lgordon-PTAB@skgf.com
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`Michael Lee
`mlee-PTAB@skgf.com
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`
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`PATENT OWNER:
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`Tam Pham
`pi-net_PTAB@lrrlaw.com
`
`Lauren Eaton
`meaton@lrrlaw.com
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`6
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`