Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`Date Entered: November 5, 2013
`
`
`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 CBM2014-00018
`Patent 8,037,158
`____________
`
`
`
`
`Before KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`571-272-7822
`
`
`Paper No. 7
`Date Entered: November 5, 2013
`
`
`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 CBM2014-00018
`Patent 8,037,158
`____________
`
`
`
`
`Before KARL D. EASTHOM, JONI Y. CHANG, and
`BRIAN J. McNAMARA.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`
`On October 21, 2013, SAP America, Inc. (Petitioner) filed a Petition For
`Covered Business Method Patent Review of claims 4-6 and 9-10 of U.S. Patent
`8,037,158 (the ʼ158 Patent).1 On November 4, 2013, a telephone conference was
`held with the parties concerning CBM2014-00018 and Petitioner’s Motion For
`Joinder with CBM2013-00013.
`The ʼ158 Patent is the subject of CBM2013-00013 in which Petitioner
`challenged the patentability of claims 1-6 and 11 of the ʼ158 Patent. CBM2013-
`00013, Corrected Petition For Covered Business Method Patent Review, Paper No.
`7. In CBM2013-00013, the Board instituted a trial on Petitioner’s challenges to all
`the challenged claims on various grounds, but on the basis that the cited references
`did not disclose the claimed limitation of object routing, the Board declined to
`institute a trial on Petitioner’s challenges to claims 4-6 under 35 U.S.C. § 101 and
`35 U.S.C. § 103. Id., Decision To Institute, Paper No. 15.2 On October 15, 2013,
`the Board denied Petitioner’s request for rehearing on Petitioner’s challenges to
`claims 4-6 under 35 U.S.C. § 103. Id., Decision Denying Request For Rehearing,
`Paper No. 23.
`The Petition For Covered Business Method Patent Review in CBM2014-
`00018 (Petition) cites additional references as a basis for challenging the
`patentability of claims 4-6 of the ʼ158 Patent under 35 U.S.C. § 103. Pet. 10-11.
`The Petition also contends, for the first time, that claims 9 and 10 of the ʼ158
`Patent do not recite statutory subject matter under 35 U.S.C. § 101. Id.at 10.
`In CBM2014-00018, Petitioner timely filed a Motion For Joinder with
`CBM2013-00013, arguing that, while the Petition introduces new prior art, its
`
`
`1 A Corrected Petition filed on October 31, 2013 is under review.
`2 In CBM2013-00013, the Board instituted a trial on Petitioner’s challenges to
`claims 4-6 under 35 U.S.C. § 112(b).
`
`
`
`2
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`proposed challenges are based on the Board’s claim interpretation in CBM2013-
`00013 and that claims 9 and 10 are similar to claim 11.
`During the teleconference, the relationship between the challenges in each
`case and the status of CBM2013-00013 were discussed. In CBM2013-00013, the
`parties have already agreed to delay the date for the Patent Owner Response and
`Motion To Amend (Due Date 1) from December 20, 2013 to January 3, 2014 and
`the date for Petitioner to file a Reply To The Patent Owner Response and/or an
`opposition to a Motion To Amend from March 20, 2014 to April 3, 2014.
`CBM2013-00013, Stipulated Motion To Adjust Dates, Paper No. 27. The parties
`have also stipulated to the same extension in related IPR2013-00194, Paper No. 25,
`and IPR2013-00195, Paper No. 19, which involve different patents and are on the
`same schedule as CBM2013-00013.
`Times set by rules are default and may be modified by order of the Board,
`taking into account applicable statutory pendency goals. 37 C.F.R. § 42.5(c)(1).
`During the teleconference, the Board proposed setting an expedited date of
`November 25, 2013 for Pi-Net International, Inc. (Patent Owner) to file a Patent
`Owner Preliminary Response and an Opposition to Petitioner’s Motion For Joinder
`in CBM2014-00018, if Patent Owner so chooses. Patent Owner noted that the
`newly cited prior art is lengthy, that the Petition includes a new 76 page
`declaration, the technical issues are complex and Patent Owner’s resources are
`limited. In view of these circumstances Patent Owner requested 3 months to file a
`Patent Owner Preliminary Response.
`A review of the record indicates that Petitioner’s new challenges to claims 4-
`6 assert art Petitioner previously asserted in CBM2013-00013 in combination with
`additional art to address claim limitations related to object routing. While the
`Exhibits attached to the Petition are somewhat lengthy, the subject matter of the
`challenges is relatively focused to a few issues. Much of the first 44 pages of
`3
`
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`Dr. Sirbu’s new 76 page declaration relates to the previously asserted prior art.
`Petitioner’s challenges to claims 9 and 10 under 35 U.S.C. § 101 are similar to
`challenges Petitioner asserted in CBM2013-00013 against claim 11. In addition,
`during the call, the parties noted that the corresponding district court litigation has
`been stayed. In view of these circumstances, an expedited date for the Patent
`Owner Preliminary Response and an Opposition to Petitioner’s Motion For Joinder
`is not unduly burdensome.
`The trial in CBM2013-00013, which includes other challenges to claims 4-6,
`is currently scheduled to coincide with the trial in IPR2013-00194 and IPR2013-
`00195. There is no basis for extending these inter partes reviews. However, there
`is a strong rationale for maintaining the schedule for CBM2013-00013 consistent
`with IPR2013-00194 and IPR2013-00195, because the patents are related. During
`the teleconference, both parties discussed that joinder of CBM2014-00018 with
`CBM2013-00013 might be appropriate, although no agreement was reached. A
`realistic consideration of the possibility of joinder requires setting the date for
`Patent Owner Preliminary Response to be slightly more than one month from now.
`Inconsideration of the above,
`It is ORDERED that Patent Owner may file a Patent Owner Preliminary
`Response not later than December 9, 2013;
`It is FURTHER ORDERED that Patent Owner may file an Opposition to
`Petitioner’s Motion For Joinder with CBM2013-00013 not later than December 9,
`2013.
`
`
`
`
`
`
`4
`
`
`
`Case CBM2014-00018
`Patent 8,037,158
`For PETITIONER:
`
`Michael Q. Lee
`mlee-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Pi-Net International, Inc.
`Attn: Dr. Lakshmi Arunachalam
`222 Stanford Avenue
`Menlo Park, CA 94025
`
`
`Lawrence B. Goodwin, Esq.
`LAWRENCE B. GOODWIN, P.C.
`525 East 86th Street, Suite 5H
`New York, NY 10028
`
`Lawrence B. Goodwin
`LawrenceGoodwinPC@gmail.com
`
`Bryan Boyle
`bboyle@carrferrell.com
`
`Gerald Dodson
`jdodson@carrferrell.com
`
`
`
`
`
`
`5
`
`
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