Trials@uspto.gov
`571-272-7822
`
`
`Paper 28
`Date Entered: September 25, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`v.
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
` ____________
`
`
`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
`
`
`
`571-272-7822
`
`
`Paper 28
`Date Entered: September 25, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`v.
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
` ____________
`
`
`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
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`Background
`At the time petition in CBM2014-00018 (“the Subject Proceeding”) was
`filed, U.S. Patent No. 8,037,158 B2, (the “Subject Patent”), was owned by Pi-Net
`International, Inc. Counsel for Pi-Net International, Inc. filed a Power of Attorney
`signed on behalf of Pi-Net International, Inc. and a Mandatory Notice entering
`their appearances. On September 8, 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 the Subject Patent, 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. Paper 26.1
`Patent Owner’s Allegations
`On September 15, 2014, 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”). Paper 27.
`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
`disclose financial conflicts of interest, resulting in an irreparably tainted Markman
`
`
`1 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 Patent, we reminded Patent Owner of the complexity of these
`proceedings and urged Patent Owner to engage appropriate counsel.
`2
`
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`Order “upon which the Office relies in the pending reexamination decision.2”
`Request for Relief 3.
`Patent Owner’s Request to Suspend Proceedings
`Patent Owner requests that the Board suspend the Subject Proceeding
`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 this proceeding and that applied in the
`district court. CBM2014-00018 is a covered business method patent review. In
`contrast to the claim construction standard applied in the district court, in this
`proceeding, we apply the broadest reasonable construction to the claims in the
`unexpired ’894 Patent. 37 C.F.R. §§ 42.100(b); 42.200(b). Thus, in the Subject
`Proceeding we do not rely upon the Markman Order issued by the district court
`and there is no basis to suspend the Subject Proceeding.
`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
`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
`
`2 Patent Owner is seeking suspension of a covered business method patent
`proceeding. Patent Owner’s reference to the pending reexamination decision
`appears to be a reference to the Subject Proceeding, which is not a reexamination
`proceeding. On September 16, 2014, during an initial conference in related
`proceedings IPR2014-00413 and IPR2014-00414, Patent Owner stated that the
`patent in that proceeding is not involved in any reexamination proceedings “at the
`CRU [central reexamination unit].”
`
`
`
`3
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`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.” Id. at 3. 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 applicable to this proceeding. Patent Owner has not
`established any connection between the district court’s Markman Order and the
`claim constructions applied by the Board to the Subject Patent 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 IPR2013-00194, IPR2013-
`00195 and CBM2013-00013. 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 Patent Owner to file a Reply to Petitioner’s
`Opposition. Nevertheless, without obtaining authorization, on September 18,
`
`
`
`4
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`2014, Patent Owner filed a Response to Petitioner Opposition (“Patent Owner’s
`Response”) in those 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.
`
`
`PETITIONER:
`Michael Q. Lee
`Lori A. Gordon
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`Mlee-PTAB@skgf.com
`Lgordon-PTAB@skgf.com
`
`PATENT OWNER:
`
`Lakshmi Arunachalam
`laks22002@yahoo.com
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
