`Tel: 571-272-7822
`
`Paper 29
`Entered: October 12, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WALGREEN CO., AHOLD USA, INC., DELHAIZE AMERICA, LLC,
`AND PUBLIX SUPER MARKETS, INC.,
`Petitioner,
`
`v.
`
`ADVANCED MARKETING SYSTEMS, LLC,
`Patent Owner.
`
`Cases CBM2016-00012
`CBM2016-00013
`CBM2016-00014
`CBM2016-00015
`Patents 8,219,445 B2
`8,370,199 B2
`8,538,805 B2
`
`Before THOMAS L. GIANNETTI, TREVOR M. JEFFERSON, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Expunging Documents
`37 C.F.R § 42.5
`
`
`
`
`
`
`
`
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`On September 27, 2016, Patent Owner requested a conference call to
`“seek guidance” on whether the following papers were properly filed:
`1. Petitioner’s Objections to Patent Owner’s Evidence, Paper 24;1
`2. Updated Patent Owner’s Response to Petition Pursuant to
`37 C.F.R. § 42.220, Paper 25;2
`3. Patent Owner’s Response to Petitioner’s Objections to Patent
`Owner's Evidence, Paper 26;3 and
`4. Declaration of Steven R. Kursh, Ph.D., CSDP, CLP in Support
`to Patent Owner’s Response to Covered Business Method
`Review of U.S. Patent No. 8,219,445; 8,538,805; and
`8,370,199, Exhibit 2024.4
`On September 28, 2016, we informed the parties via e-mail that they
`should not use e-mail communications with the Board to “seek guidance” on
`the meaning of the Rules governing these proceedings. We also informed
`the parties that we would issue an order in due course dealing with the
`Papers and Exhibit identified above.
`Paper 24 constitutes Petitioner’s objections to evidence submitted by
`Patent Owner with its Patent Owner Response. Petitioner properly filed
`Paper 24 pursuant to 37 C.F.R. § 42.64(b)(1), and that paper shall, therefore,
`
`
`1 Petitioner filed a similar paper enumerated as Paper 23 in CBM2016-00013
`through -00015.
`2 Patent Owner filed a similar paper enumerated as Paper 24 in CBM2016-
`00013 through -00015.
`3 Patent Owner filed a similar paper enumerated as Paper 25 in CBM2016-
`00013 through -00015.
`4 Patent Owner filed a similar declaration, also enumerated as Exhibit 2024
`in CBM2016-00013 through -00015.
`
`2
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`remain in the record. Rule 42.64(b)(2) specifies that Patent Owner “may
`respond to the objection by serving supplemental evidence within ten
`business days of service of the objection.”
`Presumably, Patent Owner prepared Paper Nos. 25 and 26 and Exhibit
`2024 as its response to Petitioner’s evidentiary objections. Our Rules
`neither require nor contemplate that such a response should be filed with the
`Board. Service of such a response is the only act authorized under the
`Rules; filing of the response was not authorized. Nevertheless, Patent
`Owner filed Paper Nos. 25 and 26 and Exhibit 2024 without authorization.
`Because Paper Nos. 25 and 26 and Exhibit 2024 were filed without
`authorization, we expunge them from the record.
`Patent Owner also inquired “whether filing a document utilizing the
`PTAB E2E system is considered service to the other party or if separate
`service is required.” We refer Patent Owner to 37 C.F.R. § 42.6(e) for the
`answer to its inquiry, which sets forth the procedures for “[s]ervice” of
`papers in these proceedings. To the extent that Patent Owner has not
`properly served Paper Nos. 25 and 26 and Exhibit 2024 under Rule 42.6(e),
`we expect counsel to resolve any such issues surrounding service of those
`documents amicably and without further guidance from the Board.
`Accordingly, it is:
`ORDERED that Paper Nos. 25 and 26 and Exhibit 2024 are expunged
`from the record in CBM2016-00012; and
`FURTHER ORDERED that Paper Nos. 24 and 25 and Exhibit 2024
`are expunged from the record in CBM2016-00013 through -00015.
`
`3
`
`
`
`CBM2016-00012, -00013, -00014, and -00015
`Patent 8,219,445 B2; 8,370,199 B2; and 8,538,805 B2
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`Phillip Citroën
`PAUL HASTINGS LLP
`AMS-Walgreens-PH@paulhasting.com
`
`Holly Hawkins Saporito
`Joshua Weeks
`ALSTON & BIRD LLP
`holly.saporito@alston.com
`joshua.weeks@alston.com
`
`PATENT OWNER:
`
`Michael A. Messina
`Ajay A. Jagtiani
`Mae Hong
`MILES & STOCKBRIDGE P.C.
`Messina-PTAB@milesstockbridge.com
`ajagtiani@milesstockbridge.com
`mhong@milesstockbridge.com
`
`4
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