Paper 11
`Date: February 11, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BANK OF AMERICA, N.A., PNC FINANCIAL SERVICES, INC.,
`and PNC BANK, N.A.,
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case CBM2014-00028 (Patent 8,083,137)
`Case CBM2014-00029 (Patent 7,664,701)
`Case CBM2014-00030 (Patent 7,603,382)
`Case CBM2014-00031 (Patent 6,182,894)
`Case CBM2014-00032 (Patent 7,757,298)
`Case CBM2014-00033 (Patent 7,260,587)1
`_______________
`
`Before THOMAS L. GIANNETTI, HYUN J. JUNG, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues common to all these cases. The parties are not
`authorized to use this caption for any subsequent papers without authorization from
`the Board.
`
`

`

`Case CBM2014-00028 (Patent 8,083,137), Case CBM2014-00029 (Patent 7,664,701),
`Case CBM2014-00030 (Patent 7,603,382), Case CBM2014-00031 (Patent 6,182,894),
`Case CBM2014-00032 (Patent 7,757,298), Case CBM2014-00033 (Patent 7,260,587)
`
`
`A telephone conference in the above proceedings was held on February 7,
`2014. Present on the phone call were respective counsel for Petitioners and Patent
`Owner, and Judges Giannetti, Jung, and Anderson. Patent Owner arranged for a
`court reporter and will file the transcript with the Board when it is available.
`
`
`
`Patent Owner requested the conference call to seek authorization to file
`motions for time extensions in all six cases. The motions would extend time to file
`the Patent Owner’s preliminary response, currently due on February 25, 2014, in
`each case. The motion would extend time to some unspecified date after the
`decision of the Supreme Court of the United States in Alice Corp. Pty. Ltd. v. CLS
`Bank Int’l., Case No. 13–298 (“CLS Bank”). The issue before the Supreme Court
`in CLS Bank is whether claims to computer-implemented inventions are directed to
`patent-eligible subject matter within the meaning of 35 U.S.C. § 101. Oral
`argument is set for March 31, 2014, and a decision is expected by the end of June,
`2014. For the reasons that follow, Patent Owner’s request is denied.
`
`Patent Owner stated that the Supreme Court’s decision would be helpful to
`the Board in deciding how to proceed in the case, and that it would benefit the
`parties as well. Patent Owner represented that there are eleven cases before the
`Board where 35 U.S.C. § 101 is the only ground of unpatentability asserted in the
`petition, and a Patent Owner preliminary statement has not yet been filed.
`Therefore, a time extension in the six cases here would not have a significant
`impact on other cases before the Board, at least according to Patent Owner. The
`requested extensions would be in place prior to filing of the preliminary response;
`thus the three-month deadline under 35 U.S.C. § 324(c) for deciding whether to
`institute trial would not be jeopardized.
`
`2
`
`
`

`

`Case CBM2014-00028 (Patent 8,083,137), Case CBM2014-00029 (Patent 7,664,701),
`Case CBM2014-00030 (Patent 7,603,382), Case CBM2014-00031 (Patent 6,182,894),
`Case CBM2014-00032 (Patent 7,757,298), Case CBM2014-00033 (Patent 7,260,587)
`
`
`
`
`The Board pointed out that should trials be instituted here, according to the
`schedule presented by Patent Owner, the CLS Bank Supreme Court decision would
`be available prior to final decisions, and therefore, the parties and the Board could
`have the benefit of the decision at that time. Patent Owner agreed that this is a
`likely scenario.
`
`Petitioners responded that they do not agree to an extension as it would
`delay the proceedings at least 4-5 months. Petitioners pointed out that there has
`been some development of the case law since the Federal Circuit’s en banc
`decision in CLS Bank, placing the Board in a position to determine whether a trial
`should be instituted. Petitioners agreed that if there is a change in the law as a
`result of the Supreme Court’s ruling, there will be ample time to address that
`before the Board’s final decision. It is, therefore, not necessary to delay further.
`
`DISCUSSION
`
`Our rules and practices are formulated to expedite proceedings. Thus,
`37 C.F.R. § 42.1(b) provides that the rules “shall be construed to secure the just,
`speedy, and inexpensive resolution of every proceeding.” And 37 C.F.R.
`§ 42.107(b) sets a three-month time limit for filing the preliminary response by the
`Patent Owner. To waive these rules requires a showing of good cause. See
`37 C.F.R. § 42.5(b); IPR2013-00584, Paper 20, at 4 (requiring a showing of special
`circumstances to waive one month time limit for joinder under 37 C.F.R.
`§ 42.122(b)). We do not see how this standard is met here. We are not persuaded
`that these proceedings will benefit by waiting for the Supreme Court's decision in
`CLS Bank. We are informed by Patent Owner that a district court has stayed a case
`waiting for the Supreme Court’s decision in CLS Bank. On the other hand, the
`
`3
`
`
`

`

`Case CBM2014-00028 (Patent 8,083,137), Case CBM2014-00029 (Patent 7,664,701),
`Case CBM2014-00030 (Patent 7,603,382), Case CBM2014-00031 (Patent 6,182,894),
`Case CBM2014-00032 (Patent 7,757,298), Case CBM2014-00033 (Patent 7,260,587)
`
`
`
`
`Federal Circuit has continued to decide cases under 35 U.S.C. § 101 without
`waiting for the CLS Bank decision from the Supreme Court. See, e.g., Smartgene,
`Inc. v. Advanced Biological Labs. No. 2013-1186, 2014 WL 259824 (Fed. Cir. Jan.
`24, 2014) (non-precedential) (method, system and computer program claims not
`patent eligible).
`
`The circumstances here do not justify a 4-5 month delay in these
`proceedings. The effect of the Supreme Court’s decision in CLS Bank on the
`proceedings is uncertain. And in any event, the Board is likely to have the benefit
`of the Supreme Court’s decision before reaching the final decision in the
`proceedings, should trials be instituted.
`
`ORDER
`
`In view of the above, it is hereby ORDERED that Patent Owner’s request
`for authorization to file motions seeking an extension to file preliminary responses
`to the petitions in these cases is denied.
`
`
`
`
`
`
`
`4
`
`
`

`

`Case CBM2014-00028 (Patent 8,083,137), Case CBM2014-00029 (Patent 7,664,701),
`Case CBM2014-00030 (Patent 7,603,382), Case CBM2014-00031 (Patent 6,182,894),
`Case CBM2014-00032 (Patent 7,757,298), Case CBM2014-00033 (Patent 7,260,587)
`
`
`
`
`
`
`FOR PETITONERS:
`
`Donald R. Steinberg
`Monica Grewal
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Don.Steinberg@wilmerhale.com
`Monica.Frewal@wilermhale.com
`
`FOR PATENT OWNER:
`
`Herbert D. Hart III
`Jonathon R. Sick
`Eligio Pimentel
`David Petty
`Kirk Vander Leest
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`jsick@mcandrews-ip.com
`epimentel@mcandrews-ip.com
`dpetty@mcandrews-ip.com
`kvanderleest@mcandrews-ip.com
`
`Brenton R. Babcock
`Ted M. Cannon
`KNOBBE, MARTENS, OLSON, & BEAR
`2brb@knobbe.com
`2tmc@knobbe.com
`
`Henry A. Petri
`James P. Murphy
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`henry.petri@novakdruce.com
`james.murphy@novakdruce.com
`
`
`5
`
`
`