Trials@uspto.gov Paper No. 10 IPR2013–00194 Paper 66
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`571-272-7822
`IPR2013–00195 Paper 59
`CBM2013–00013 Paper 60
`Date Entered: September 18, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`
`Petitioner
`v.
`LAKSHMI ARUNACHALAM,
`
`Patent Owner.
`____________
`
`Case IPR2013–00194
`Patent 8,108,492 B2
`Case IPR2013–00195
`Patent 5,987,500
`Case CBM2013–00013
`Patent 8,037,158 B21
` ____________
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER DENYING PATENT OWNER’S REQUEST TO SUSPEND
`PROCEEDINGS AND REFER MATTERS TO THE INSPECTOR GENERAL
`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 B2; 5,987,500; 8,037,158 B2
`
`
`Background
`
`At the time petitions in IPR2013–00194, IPR2013–00195, and CBM2013–
`
`00013 (“the Subject Proceedings”) were filed, U.S. Patent No. 8,108,492 B2,
`
`U.S. Patent No. 5,987,500, and U.S. Patent No. 8,037,158 B2 (“the Subject
`
`Patents”), were owned by Pi-Net International, Inc. In each proceeding, counsel
`
`for Pi-Net International, Inc. filed a Power of Attorney signed on behalf of Pi-Net
`
`International, Inc. and Mandatory Notices entering their appearances. On
`
`September 9, 2014, an assignment from Pi-Net International, Inc. to the inventor,
`
`Dr. Lakshmi Arunachalam, was recorded in the United States Patent and
`
`Trademark Office at Reel 033684, Frame 0252. Dr. Arunachalam (“Patent
`
`Owner”) did not grant a Power of Attorney. As Pi-Net International, Inc. no longer
`
`owns of the Subject Patents, previous counsel of record are no longer authorized to
`
`act on behalf of Patent Owner. On September 10, 2014, Dr. Arunachalam filed a
`
`Mandatory Notice appearing pro se. (IPR2013-00194, Paper 62; IPR2014-00195,
`
`Paper 55; CBM2013-00013, Paper 56).2
`
`Patent Owner’s Allegations
`
`On September 15, 2014, in each of the Subject Proceedings, Patent Owner
`
`filed a paper titled Patent Owner Challenging Validity and Impartiality of
`
`Proceedings Due To Fraud Upon The Office and Request For Fraud Investigation
`
`By The Inspector General (“Request for Relief”). IPR2014-00194, Paper 63;
`
`IPR2014-00195, Paper 56; CBM2013-00013, Paper 57.
`
`Patent Owner’s allegations are not directed at the Board. Patent Owner
`
`alleges that in Case No. 1:12-cv-282-SLR, the judges of the district court failed to
`
`
`2 On September 16, 2014, during an initial conference in cases IPR2014-00413 and
`IPR2014-00414, which concern a patent having the same specification as that of
`the Subject Patents, we reminded Patent Owner of the complexity of these
`proceedings and urged Patent Owner to engage appropriate counsel.
`
`
`
`2
`
`

`
`Case IPR2013–00194; IPR2013–00195; CBM2013–00013
`Patent 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`disclose financial conflicts of interest, resulting in an irreparably tainted Markman
`
`Order “upon which the Office relies in the pending reexamination decision.3”
`
`Request for Relief 3.
`
`Patent Owner’s Request to Suspend Proceedings
`
`Patent Owner requests that the Board suspend the Subject Proceedings
`
`pending resolution of the alleged financial conflicts of interest by the members of
`
`the district court. Id. at 4. For the reasons discussed below, we deny Patent
`
`Owner’s requests.
`
`Patent Owner’s references to the Markman Order “upon which the Office
`
`relies” are incorrect because they do not recognize the difference between the
`
`claim construction approach applied in the Subject Proceedings and that applied in
`
`the district court. The Subject Proceedings are inter partes reviews and a covered
`
`business method patent review. In contrast to the claim construction standard
`
`applied in the district court, in the Subject Proceedings, we apply the broadest
`
`reasonable construction to the claims in these unexpired patents. 37 C.F.R.
`
`§§ 42.100(b); 42.200(b). Thus, in these proceedings we do not rely upon the
`
`Markman Order issued by the district court and there is no basis to suspend the
`
`Subject Proceedings.
`
`Request for Referral to Inspector General
`
`Patent Owner also requests that we refer the district court’s alleged fraud on
`
`the U.S. Patent and Trademark Office, Request for Relief 2, to the Office of the
`
`
`3 Patent Owner is seeking suspension of two inter partes reviews and one covered
`business method patent proceeding. Patent Owner’s reference to the pending
`reexamination decision appears to be a reference to the Subject Proceedings, which
`are not reexamination proceedings. During the September 16, 2014, initial
`conference in related proceedings IPR-2014-00413 and IPR2014-00414, Patent
`Owner stated that the patent in that proceeding was not involved in any
`reexamination proceedings “at the CRU [central reexamination unit].”
`
`
`
`3
`
`

`
`Case IPR2013–00194; IPR2013–00195; CBM2013–00013
`Patent 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`Inspector General to conduct a fraud investigation, id. at 4. The Patent Trial and
`
`Appeal Board is not the appropriate forum for the Patent Owner to request an
`
`investigation by the Inspector General. Even if it were, the Request for Relief
`
`contains only Patent Owner’s allegations. There is no evidence to support these
`
`allegations. Patent Owner states that it incorporates by reference “[a]ll filings in
`
`Case Nos. 1:12-cv-355-RGA and 1:12-cv-282-SLR between the dates of
`
`August 25, 2014 and September 16, 2014.” Such incorporation by reference is not
`
`permitted under our rules. 37 C.F.R. § 42.6(a)(3). In addition, filings concerning
`
`collateral matters not related to these proceedings would not be appropriate.
`
`Further, as noted above, the Markman Order in the district court reflects the
`
`application of a claim construction standard that is different from the claim
`
`construction standard applied in these proceedings. Patent Owner has not
`
`established any connection between the district court’s Markman Order and the
`
`claim constructions applied in the Subject Proceedings that would result in the
`
`alleged fraud on the Office. Thus, we deny Patent Owner’s request concerning the
`
`Inspector General.
`
`Failure to Obtain Authorization Prior to Filing Request for Relief
`
`Finally, we note that Patent Owner filed its Request for Relief, which we
`
`treat as a motion, 37 C.F.R. § 42.20(a), without obtaining prior authorization from
`
`the Board, 37 C.F.R. § 42.20(b). During an initial conference in related cases
`
`IRR2014-00413 and IPR2014-00414, we authorized Petitioner to file a short
`
`Opposition to Patent Owner’s Request for Relief in these proceedings. SAP Am.
`
`Inc., v. Arunachalam, Case IPR2014-00413, Initial Conference Summary
`
`(Paper 17) at 5-6 (PTAB Sep. 17, 2014). We also reminded Patent Owner of the
`
`requirement to seek authorization before filing any papers with the Board. Id. at 6.
`
`Patent Owner did not seek our authorization to file a Reply, nor did we authorize
`
`
`
`4
`
`

`
`Case IPR2013–00194; IPR2013–00195; CBM2013–00013
`Patent 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`Patent Owner to file a Reply to Petitioner’s Opposition. Nevertheless, without
`
`obtaining authorization, on September 18, 2014, Patent Owner filed a Response to
`
`Petitioner Opposition (“Patent Owner’s Response”) in these proceedings.
`
`IPR2013-00194, Paper 65; IPR2013-00195, Paper 58; IPR2013-00013, Paper 59.
`
`In view of Patent Owner’s pro se status, we have considered the Request for Relief
`
`and Patent Owner’s Response. However, we again remind Patent Owner of the
`
`requirement to request authorization before filing any further requests for relief, or
`
`other papers not provided for under the rules, in proceedings before the Board.
`
`Further unauthorized motions, requests for relief, or other papers will not be
`
`considered and sanctions may be imposed.
`
`
`
`In consideration of the above, it is
`
`ORDERED that Patent Owner’s Request for Relief is DENIED;
`
`FURTHER ORDERED that Patent Owner is to comply with the provisions
`
`of 37 C.F.R. 42 et. seq. in proceedings before the Board.
`
`
`
`
`
`5
`
`

`
`Case IPR2013–00194; IPR2013–00195; CBM2013–00013
`Patent 8,108,492 B2; 5,987,500; 8,037,158 B2
`
`
`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
`
`
`
`
`6