Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 23
`Entered: May 12, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GROUPON, INC.
`Petitioner
`
`v.
`
`BLUE CALYPSO, LLC
`Patent Owner
`____________
`
`Cases CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`CBM2013-00044 (Patent 8,452,646)
` CBM2013-00046 (Patent 8,438,055)1
`____________
`
`
`Before JONI Y. CHANG, MICHAEL W. KIM, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are identical in all five cases. Therefore, we
`issue one order to be filed in each of the cases. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
`571-272-7822
`
`
`
` Paper 23
`Entered: May 12, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`GROUPON, INC.
`Petitioner
`
`v.
`
`BLUE CALYPSO, LLC
`Patent Owner
`____________
`
`Cases CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`CBM2013-00044 (Patent 8,452,646)
` CBM2013-00046 (Patent 8,438,055)1
`____________
`
`
`Before JONI Y. CHANG, MICHAEL W. KIM, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are identical in all five cases. Therefore, we
`issue one order to be filed in each of the cases. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`On May 8, 2014, a telephone conference call was held between respective
`counsel for the parties, and Judges Chang, Kim, and Benoit for the above-
`identified proceedings.2 Petitioner initiated the call to discuss whether Patent
`Owner waived the argument—Ratsimor3 is not a “printed publication”—as Patent
`Owner did not serve an objection to evidence under 37 C.F.R. § 42.64(b),
`concerning Ratsimor’s publication date.
`During the conference call, Petitioner also requested three additional pages
`for its Reply. Patent Owner sought leave to file a motion to submit supplemental
`information. We address each of the parties’ issues in turn.
`
`1. The differences between admissibility of evidence and sufficiency of evidence
`
`Petitioner argued that, because Patent Owner failed to serve an objection to
`evidence under 37 C.F.R. § 42.64(b) for Petitioner’s expert declaration regarding
`Ratsimor’s publication date (Ex. 1008 ¶ 2), Patent Owner waived the argument that
`Ratsimor is not a “printed publication” under 35 U.S.C. § 102(b). According to
`Petitioner, Patent Owner’s failure to serve an objection to evidence deprived
`Petitioner the opportunity to provide supplemental evidence.
`Patent Owner disagreed with Petitioner’s contention, arguing that an
`objection under 37 C.F.R. § 42.64(b)(1) is related to the admissibility of evidence
`
`
`2 For the purpose of clarity and expediency, we treat CBM2013-00033 as
`representative, and all citations are to CBM2013-00033 unless otherwise noted.
`3 Ratsimor, Olga, et al., Technical Report TR-CS-03-27 “Intelligent Ad Hoc
`Marketing Within Hotspot Networks,” published November 2003 (Ex. 1006).
`Petitioner relies upon Ratsimor for at least one of the instituted grounds of
`unpatentability. Paper 10, 40.
`
`2
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`(e.g., authenticity or hearsay), which is not a requirement for challenging the
`sufficiency of the evidence to prove a particular fact (e.g., the weight of the
`evidence). According to Patent Owner, its argument—Petitioner fails to provide
`sufficient evidence to establish that Ratsimor is a “printed publication”—is related
`to the sufficiency of the evidence, and, therefore, such an argument is submitted
`appropriately in a patent owner response.
`As support, Patent Owner directed our attention to the discussion in
`Bloomberg Inc. v. Markets-Alert Pty Ltd.:
`As explained by the Board, parties may raise issues related to
`admissibility of evidence (e.g., authenticity or hearsay) in a motion to
`exclude. See 37 C.F.R. §§ 42.64 and 42.62. In contrast, issues related
`to credibility and the weight of the evidence should be raised in
`responses and replies. Further, a motion to exclude may not be used
`to challenge the sufficiency of the evidence to prove a particular fact,
`or to present arguments that should have been presented in responses
`or replies. For instance, arguments related to the issue of whether a
`U.S. patent or U.S. application publication is prior art under 35 U.S.C.
`§ 102(e) against a substituted claim should be presented in a reply
`rather than in a motion to exclude.
`CBM2013-00005, slip op. at 5, (PTAB Nov. 15, 2013) (Paper 56).
`Patent Owner further informed the Board that Patent Owner is not
`challenging the admissibility of Petition’s expert testimony (Ex. 1008 ¶ 2). Nor
`will Patent Owner file a motion to exclude that evidence.
`We agree with Patent Owner that an objection to evidence under 37 C.F.R.
`§ 42.64 is not necessary to preserve its right to challenge the sufficiency of
`evidence in a patent owner response. In fact, such an objection would not have
`been proper if there is no basis for challenging the admissibility of evidence.
`
`3
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`We are not persuaded by Petitioner’s contention that Patent Owner waived
`the argument that Ratsimor is not a “printed publication,” unless Patent Owner has
`served an objection to evidence under 37 C.F.R. § 42.64(b), concerning Ratsimor’s
`publication date. Petitioner is confusing two separate and distinct challenges:
`(1) the admissibility of evidence (e.g., authenticity or hearsay), which requires the
`opposing party to serve an objection to evidence under 37 C.F.R. § 42.64(b), in
`order to preserve the right to file a motion to exclude evidence; and (2) the
`sufficiency of evidence to prove a particular fact (e.g., whether the evidence is
`sufficient to demonstrate, by a preponderance of evidence, that a reference is a
`“printed publication” under 35 U.S.C. § 102(b)). As Patent Owner indicated
`during the conference call, it is not challenging the admissibility of evidence
`(e.g., authenticity or hearsay).
`To support its position, Petitioner directed our attention to the decisions
`entered in LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, slip op. 4 (PTAB
`Mar. 5, 2013) (Paper 17), and Motorola Solutions, Inc. v. Mobile Scanning Tech.,
`LLC, IPR2013-00093, slip op. 2 (PTAB July 16, 2013) (Paper 39). However,
`neither case relates to waiver of argument. In fact, both cases are related to the
`admissibility of evidence (e.g., authenticity or hearsay), rather than, as here, the
`sufficiency of evidence. In LKQ, the decision dismissed the patent owner’s motion
`to exclude evidence, where patent owner alleged that the evidence was
`unauthenticated and inadmissible hearsay. LKQ, slip op. at 4. The main issue in
`that decision is that patent owner’s motion to exclude was filed prematurely in a
`patent owner preliminary response, and, as noted in the decision, patent owner
`should have followed the procedure under 37 C.F.R. § 42.64 for objecting to the
`
`4
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`admissibility of the evidence. Id. In Motorola Solutions, the decision granted the
`petitioner’s request to file supplemental evidence in response to patent owner’s
`contention made also in a patent owner preliminary response, that the documents
`had not been authenticated. Motorola Solutions, slip op. at 2. Therefore, those
`cases cited by Petitioner do not support Petitioner’s position that Patent Owner’s
`argument for the sufficiency of evidence is waived and cannot be presented in a
`patent owner response, unless an objection to evidence under 37 C.F.R. § 42.64
`has been served.
`We also are not persuaded by Petitioner’s argument that Patent Owner’s
`action—merely challenging the sufficiency of evidence, rather than challenging
`both the admissibility and sufficiency of evidence—prejudice Petitioner. As we
`explained during the conference call, Petitioner may file a Reply with supporting
`evidence responding to Patent Owner’s argument.
`For the foregoing reasons, we determine that Patent Owner did not waive its
`argument that Ratsimor is not a “printed publication” under 35 U.S.C. § 102(b).
`
`2. Three additional pages for Petitioner’s Reply
`
`Petitioner requested three additional pages for its Reply should the Board
`determine that Patent Owner did not waive the “printed publication” argument.
`Patent Owner opposed Petitioner’s request, arguing that Petitioner, as the moving
`party, has the burden of proof to establish that the challenged claims are
`unpatentable. According to Patent Owner, Petitioner should have submitted
`sufficient showing, in its Petition, to establish that Ratsimor is a “printed
`publication.” In response, Petitioner noted that the Board, in the Decision on
`
`5
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`Institution (Paper 10, 23-24), determined that Petitioner has demonstrated that it is
`more likely than not that the challenged claims are unpatentable, and the Board
`was not persuaded by Patent Owner’s argument, submitted in the patent owner
`preliminary response, that Petitioner has failed to establish that Ratsimor is a
`“printed publication.”
`Upon consideration of the parties’ contentions, we determine that
`Petitioner’s request did not present extraordinary circumstances that justified three
`additional pages for its Reply. Many petitioners have been able to limit their
`replies to 15 pages, responding to “printed publication” issues as well as other
`patentability arguments. See, e.g., EMC Corp. v. PersonalWeb Tech., LLC,
`IPR2013-00085, slip op. 14-15 (PTAB Oct. 14, 2013) (Paper 48). A reply should
`only respond to arguments raised in the patent owner response, regarding grounds
`of unpatentability that were instituted. 37 C.F.R. § 42.23. Notably, we observe
`that only three grounds of unpatentability based on two references were instituted
`in the instant proceeding. Paper 10, 40. Furthermore, Petitioner may file expert
`declaration or other evidence in support of its Reply.
`For the foregoing reasons, Petitioner’s request for three additional pages for
`its Reply is denied.
`
`3. Motion to submit supplemental information
`
`Patent Owner requested leave to file a motion to submit supplemental
`information under 37 C.F.R. § 42.123(b), for filing its supplemental evidence
`served in response to Petitioner’s evidentiary objection. However, Patent Owner
`indicated that its request is contingent upon whether the Board grants Petitioner’s
`
`6
`
`
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`request for three additional pages for its Reply. As we articulated above,
`Petitioner’s request is denied, and, therefore, Patent Owner’s request also is denied.
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`Order
`
`It is
`ORDERED that Patent Owner did not waive its argument that Ratsimor is
`not a “printed publication,” and such argument is presented appropriately in a
`patent owner response;
`FURTHER ORDERED that Petitioner’s request for three additional pages
`for its Reply is denied; and
`FURTHER ORDERED that Patent Owner’s contingent request for leave to
`file a motion to submit supplemental information under 37 C.F.R. § 42.123(b) is
`denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`CBM2013-00044 (Patent 8,452,646)
`CBM2013-00046 (Patent 8,438,055)
`
`CBM2013-00033 (Patent 8,155,679)
`CBM2013-00034 (Patent 8,457,670)
`CBM2013-00035 (Patent 7,664,516)
`
`PETITIONER:
`
`Jeanne Gills
` jmgills@foley.com
`
`Troy Smith
`tdsmith@foley.com
`
`
`PATENT OWNER:
`
`John Phillips
`Phillips@fr.com
`
`Carl Bruce
`bruce@fr.com
`
`David Conrad
`Conrad@fr.com
`
`
`8
`
`
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