`
`571-272-7822
`IPR2013-00195 Paper 53
`CBM2013-00013 Paper 54
`Date Entered: June 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 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 GRANTING JOINT MOTION TO WITHDRAW REQUEST FOR
`ORAL HEARING AND CANCELING TRIAL HEARING
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`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.
`
`
`
`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`
`
`Both Petitioner and Patent Owner requested an oral hearing in each of
`
`related proceedings IPR2013-00194, IPR2013-00195, and CBM2013-00013 (the
`
`“subject proceedings”). On May 23, 2014, we issued an order in each of these
`
`proceedings setting a consolidated trial hearing (Trial Hearing Order).
`
`The Trial Hearing Order discussed the potential effect of a recent decision in
`
`Pi-Net International, Inc. v. JPMorgan Chase & Co., Case No. 1:12-cv-00282 (D.
`
`Del.). The district court issued a claim construction order and opinion concluding
`
`that certain claim terms are indefinite and an order and opinion granting
`
`defendant’s motion for summary judgment on the basis that all of the patents
`
`involved in this proceeding, i.e., U.S. Patent No. 8,108,492, U.S. Patent No.
`
`5,987,500 and U.S. Patent No. 8,037,185 (“the subject patents”), are invalid.
`
`Patent Owner has filed Notice of Appeal of the district court decision. In view of
`
`the appeal of the district court decision and the differences between the district
`
`court proceeding and the subject proceedings, we also advised the parties that we
`
`would hear argument on all issues.
`
`After obtaining authorization, on June 2, 2014, the parties filed a Joint
`
`Motion of Petitioner and Patent Owner to Withdraw Requests for Oral Argument
`
`(Joint Request) in each proceeding. The parties request that we decide these
`
`proceedings based on the papers filed by the parties. The parties also note that no
`
`inference should be drawn from their joint request to forego oral argument.
`
`In view of the Joint Request, we will decide each of the subject proceedings
`
`based on the papers and will cancel the oral hearing.
`
`2
`
`
`
`
`
`
`
`Case IPR2013-00194; IPR2013-00195; CBM2013-00013
`Patent 8,108,492; 5,987,500; 8,037,158
`
`
`
`In consideration of the above it is:
`
`ORDERED that the Joint Motion of Petitioner and Patent Owner to
`
`Withdraw Requests for Oral Argument is GRANTED;
`
`FURTHER ORDERED that the Trial Hearing set for 1:00 PM on June 16,
`
`2014 is CANCELLED.
`
`
`
`PETITIONER:
`
`Lori Gordon
`lgordon-PTAB@skgf.com
`
`Michael Lee
`mlee-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Tam Thanh Pham
`pi-net_PTAB@lrrlaw.com
`
`Lauren Eaton
`meaton@lrrlaw.com
`
`
`
`
`
`3
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