Trials@uspto.gov Paper No. 10 Paper No. 25
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`571-272-7822
`Date Entered: October 17, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAP AMERICA, INC.
`Petitioner
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`v.
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`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case CBM2013-00013
`Patent 8,037,158
`____________
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`
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`Before, KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA, Administrative Patent Judges
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`McNAMARA, Administrative Patent Judge.
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`INITIAL CONFERENCE SUMMARY AND ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Case CBM2013-00013
`Patent 8,037,158
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`On October 16, 2013, the Board conducted an initial conference with the
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`parties in the following related proceedings: IPR2013-00194, IPR2013-00195, and
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`CBM2013-00013. Issues raised by SAP America, Inc. (Petitioner) and Pi-Net
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`International, Inc. (Patent Owner), in correspondence to the Board requesting a
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`conference, were also addressed. Petitioner was represented by Michael Lee and
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`Lori Gordon, and Patent Owner was represented by Bryan Boyle, Gerard Dodson
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`and Lawrence Goodwin.
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`Matters Common To All The Proceedings
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`Patent Owner requested that the Board consider extending the Scheduling
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`Order by 6 months. During the conference, the Board advised the parties that the
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`proceedings are not so extraordinary that the Board would consider extending
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`Dates 4-7 of the current Scheduling Order. Patent Owner then suggested a one
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`month extension to the date for filing the Patent Owner Response. Petitioner
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`responded that it would consider Patent Owner’s request depending upon its
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`impact on other dates. The Board reminded the parties that they can stipulate to
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`changes in Dates 1-3 of the Scheduling Order, provided that no date is later than
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`Date 4, and suggested that the Patent Owner and Petitioner cooperate with each
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`other concerning Dates 1-3. The parties are authorized to file a Stipulated Motion
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`adjusting Dates 1-3 only. The parties are not authorized to stipulate to extensions
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`of Dates 4-7. If the parties are unable to agree to an extension sought by another
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`party, the party seeking the extension should request a conference with the Board.
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`The parties also indicated that a Protective Order has been entered in the
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`related district court litigation and that they had not negotiated a separate order in
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`this proceeding. The Board reminded the parties of the default Protective Order.
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`The parties agreed that there are no protective order matters to be addressed in
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`Case CBM2013-00013
`Patent 8,037,158
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`these proceedings at this time. The parties have indicated that one or more motions
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`to seal may be required during these proceedings. At this time, no such motions
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`are pending. The Board encourages the parties to work together to avoid disputes
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`concerning the designation of material as confidential.
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`The parties have not agreed to any initial discovery? disclosures in any of
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`the proceedings at this time. The parties indicated that they may seek additional
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`discovery as these matters proceed. The parties are required to obtain
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`authorization from the Board before filing any motion for discovery. The Board
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`encourages the parities to cooperate with each other to avoid discovery disputes.
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`Patent Owner has indicated that it has not determined whether it will file any
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`motions to amend. Patent Owner was reminded of the requirement to confer with
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`the Board before filing a motion to amend and the requirements of
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`37 C.F.R. § 42.121 concerning motions to amend. See also, Idle Free Systems v.
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`Bergstrom, Inc., IPR2013-00027, Decision On Motion To Amend Claims, Paper
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`No. 26.
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`The following matters specific to certain of the proceedings were also
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`addressed:
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`IPR2013-00194
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`On October 2, 2013, Petitioner filed a Request for Rehearing of the Board’s
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`Decision To Institute. Paper No. 16. On October 10, 2013, Patent Owner, without
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`obtaining prior authorization from the Board, filed an Opposition to Petitioner’s
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`Request for Rehearing (Opposition). Paper No. 19. Petitioner now seeks
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`authorization to file a motion to expunge Patent Owner’s Opposition. The Board
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`decided the Request for Rehearing without considering Patent Owner’s
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`Opposition, because Patent Owner had not sought the Board’s authorization to file
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`the Opposition. The matter is now moot and Patent Owner’s Opposition,
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`Case CBM2013-00013
`Patent 8,037,158
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`Paper No. 19, will be expunged. There is no need for Petitioner to file a Motion to
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`Expunge.
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`Patent Owner requested authorization to file a motion to supplement to
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`“swear behind” the Chelliah reference, which is a basis for a challenge on which
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`this trial has been instituted. The Board advised the Patent Owner that such an
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`argument should be raised in the Patent Owner’s Response, rather than by motion.
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`Patent Owner is not authorized to file a motion to supplement to “swear behind”
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`the Chelliah reference.
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`CBM2013-00013
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` On October 2, 2013, Petitioner filed a Request for Rehearing of the Board’s
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`Decision To Institute. Paper No. 17. On October 10, 2013, Patent Owner, without
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`obtaining prior authorization from the Board, filed an Opposition to Petitioner’s
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`Request for Rehearing (Opposition). Paper No. 20. Petitioner now seeks
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`authorization to file a motion to expunge Patent Owner’s Opposition. The Board
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`decided Petitioner’s Request for Rehearing without considering Patent Owner’s
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`Opposition, because Patent Owner had not sought the Board’s authorization to file
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`the Opposition. The matter is now moot and Patent Owner’s Opposition, Paper
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`No. 20, will be expunged. There is no need for Petitioner to file a Motion to
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`Expunge.
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`Petitioner has requested authorization to file supplemental information
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`relevant to its challenge under 35 U.S.C. § 103 based on the Standard Federal
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`Credit Union (SFCU) publication. Ex. 1005. However, it is unclear exactly what
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`information would be the subject of Petitioner’s proposed Motion to Supplement.
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`During the conference Petitioner stated that it has reason to believe that
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`information concerning SFCU, beyond that available when it filed the petition,
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`exists. Petitioner stated that the information it seeks may concern the operation of
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`Case CBM2013-00013
`Patent 8,037,158
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`the SFCU system and may be useful in rebutting issues likely to be raised in the
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`Patent Owner Response or by a Motion to Amend. According to Petitioner, the
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`Patent Owner Preliminary Response has already raised the issue of whether the
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`Patent Owner was the first to implement certain features on the web and further
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`discovery of SFCU would help rebut that contention. First, we note that the Board
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`has already instituted a trial based on SFCU, notwithstanding the contentions in the
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`Patent Owner’s Preliminary Response. Second, Petitioner’s request is aimed more
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`at discovery than a Motion to Supplement. Petitioner has not identified any
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`information it currently possesses that Petitioner would use to supplement the
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`record. Instead, Petitioner has identified areas in which it seeks discovery.
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`Therefore, Petitioner’s request for authorization to file a motion to supplement is
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`denied.
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` This leads us to Petitioner’s Request to file a Motion to Compel Discovery
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`from SFCU. During the conference, Patent Owner suggested that Petitioner may
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`have obtained some SFCU information through improper discovery in the district
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`court litigation. Petitioner stated it needs the Board to compel discovery because
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`SFCU has refused Petitioner’s request for a declaration. At this stage of these
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`proceedings, however, Petitioner’s request to compel discovery is both
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`insufficiently specific and premature. Petitioner speculates that Patent Owner will
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`file a Motion to Amend or take certain positions during the proceeding that will
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`require discovery of certain, as yet unidentified, information for rebuttal purposes.
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`Petitioner seeks to discover information from SFCU that it may use to rebut
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`expected assertions that the Patent Owner was the first to develop certain features
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`of web banking. It is not known at this time whether the Patent Owner will amend
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`the claims or make such assertions in the Patent Owner Response. It is also not
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`known whether Petitioner could rebut such assertions with other publicly available
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`Patent 8,037,158
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`information. We understand the concerns expressed by Petitioner that delaying
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`such discovery, should it be appropriate, could place a burden on Petitioner.
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`However, the Board is not inclined to authorize a motion to compel such discovery
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`from an uninvolved third party without a more clear articulation of the reason such
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`discovery is necessary, the scope of information sought and its intended use.
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`Petitioner’s request to file a motion to compel discovery is denied at this time.
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`Petitioner has also requested authorization to file a motion for joinder related
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`to a second petition for Covered Business Method Patent Review of
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`U.S. Patent 8,037,158 (´158 Patent) to be filed within one month of institution of
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`current proceeding CBM2013-00013. Petitioner should file its Motion for Joinder
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`at the same time it files the second petition. 37 C.F.R. § 42.122. See also,
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`Kyocera Corp. v. Softview, IPR2013-00004, Order Authorizing Motion for Joinder,
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`Paper No. 15.
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`Inconsideration of the above,
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`It is ORDERED that the parties are authorized to file a Stipulated Motion to
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`Change Dates 1-3 of the Scheduling Order (earlier or later, but with no date later
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`than Due Date 4);
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`It is FURTHER ORDERED that Petitioner’s requests for authorization to
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`file a Motion to Expunge Patent Owner’s Opposition to Petitioner’s Request for
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`Rehearing in IPR2013-00194 and CBM 2013-00013 are unnecessary and are
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`DENIED;
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`It is FURTHER ORDERED that Patent Owner’s request to file a motion to
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`supplement is DENIED;
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`It is FURTHER ORDERED that Petitioner’s request to file a motion to
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`supplement is DENIED; and
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`Case CBM2013-00013
`Patent 8,037,158
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`It is FURTHER ORDERED that Petitioner’s request to file a motion to
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`compel discovery is DENIED.
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`PETITIONER: (via electronic transmission)
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`Michael Q. Lee
`Mlee-PTAB@skgf.com
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`Lori A. Gordon
`Lgordon-PTAB@skgf.com
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`PATENT OWNER: (via electronic transmission)
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`Bryan Boyle
`bboyle@carrferrell.com
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`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
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`Gerald Dodson
`jdodson@carrferrell.com
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