`571-272-7822
`
`
`
`Paper 33
`
`
`
` Date: October 6, 2014
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`BANK OF AMERICA, N.A., PNC FINANCIAL SERVICES GROUP,
`INC., and PNC BANK, N.A.,
`
`Petitioners,
`
`v.
`
` INTELLECTUAL VENTURES I LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2014-00028
`Patent 8,083,137
`
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and GREGG I.
`ANDERSON, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.05
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2014-00028
`Patent 8,083,137
`
`
`At the request of counsel for Patent Owner, a telephone conference
`
`was held on October 3, 2014. Judges Giannetti, Jung, and Anderson
`
`participated along with counsel for the parties. The subject was Patent
`
`Owner’s request for authorization to file a motion to suspend the proceeding
`
`while the Federal Circuit decides an appeal involving the same patent. For
`
`the reasons that follow, this request is denied.
`
`
`
`BACKGROUND
`
`On May 22, 2014, the Board instituted this covered business method
`
`patent review of claims 1-24 of U.S. Patent No. 8,083,137 (“the ʼ137
`
`patent”). Paper 18. The sole challenge to patentability in this proceeding is
`
`that claims 1-24 are drawn to non-statutory subject matter under 35 U.S.C. §
`
`101. Id. at 25. Patent Owner has filed a response (Paper 26) and a final
`
`hearing date of February 17, 2015 has been set.
`
`On April 16, 2014, the United States District Court for the Eastern
`
`District of Virginia, in Intellectual Ventures I LLC v. Capital One Financial
`
`Corp., Civil Action No 1:13-cv-00740 (AJT/TRL), granted a motion for
`
`summary judgment that claims 5-11 of the ʼ137 patent are invalid based on
`
` § 101 and dismissed the action. A copy of that decision was filed by
`
`Petitioner on April 25, 2014. Ex. 1023.
`
`Patent Owner advised the Board that the Eastern District of Virginia’s
`
`decision is now on appeal to the Federal Circuit and that briefing will be
`
`completed in October 2014. Patent Owner asserts that the appeal hearing
`
`will be in January 2015 and that the decision may come in April 2015,
`
`although Patent Owner recognizes that this timing is not “definitive.” Patent
`
`Owner argues that the Federal Circuit’s decision would be dispositive as to
`
`
`
`2
`
`
`
`Case CBM2014-00028
`Patent 8,083,137
`
`claims 5-11 and could provide guidance to the Board on other issues such as
`
`claim construction. Patent Owner requests authorization to file a motion to
`
`suspend this proceeding until the Federal Circuit decides the appeal. Patent
`
`Owner asserts that the Board has the authority to stay the proceeding even if
`
`it goes beyond the one-year pendency limitation. 37 C.F.R. § 42.200(c).
`
`Petitioner, in response, points out that there is no guarantee that the
`
`appeal will be decided by April 2015 and that the request amounts to an
`
`open-ended stay. Petitioner points out that it is not a party to the Federal
`
`Circuit appeal and would not be bound by the result. Petitioner argues that
`
`only claim 5-11 are involved in the appeal and thus this proceeding would be
`
`necessary whatever the outcome of the appeal.
`
`
`
`DISCUSSION
`
`The grant of the relief sought by Patent Owner in these circumstances
`
`requires a showing of good cause. See Paper 14 in this proceeding (denying
`
`request to delay proceeding pending decision of the Supreme Court in Alice
`
`Corp. Pty. Ltd. v. CLS Bank Int’l); Trulia, Inc. v. Zillow, Inc., Case
`
`CBM2013-00056, Paper 38 (Sept. 24, 2014) (denying stay pending FTC
`
`approval of merger between the parties). As stated in Trulia, “These facts
`
`together present a scenario with numerous moving parts. Almost everything
`
`is uncertain. Yet, the parties desire to delay this proceeding for 6 months to
`
`1 year, simply to wait and see.” Trulia, slip op. at 3.
`
`We agree with Petitioner that there is no guarantee that the appeal will
`
`be decided by April 2015; Patent Owner admits that this is just an estimate
`
`that is not “definitive.” Furthermore, the outcome of the appeal is not
`
`dispositive of the case as only claims 5-11 are involved.
`
`
`
`3
`
`
`
`Case CBM2014-00028
`Patent 8,083,137
`
`
`Under the circumstances, Patent Owner has failed to persuade us that
`
`there is sufficient evidence of good cause to justify authorizing the motion to
`
`suspend.
`
`It is therefore
`
`ORDERED that the request of Patent Owner for authorization to file a
`
`motion to suspend this proceeding is denied.
`
`
`
`
`
`
`
`PETITIONER:
`
`Donald R. Steinberg
`Monica Grewal
`WILMER CUTLER PICKERING
`don.steinberg@wilmerhale.com
`monica.grewal@wilmerhale.com
`
`PATENT OWNER:
`
`Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`
`
`
`
`4
`
`
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