Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 28
`Filed: May 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NAUTILUS HYOSUNG INC.,
`Petitioner,
`
`v.
`
`DIEBOLD NIXDORF, INC.,1
`Patent Owner.
`_______________
`
`Case CBM2016-00034
`Patent 7,314,163
`______________
`
`
`
`
`
`Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Post-Hearing Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`1 After institution of this covered business method patent review, Patent
`Owner changed its name. See Paper 18. We use Patent Owner’s updated
`name in this Order.
`
`
`571.272.7822
`
`
`Paper No. 28
`Filed: May 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NAUTILUS HYOSUNG INC.,
`Petitioner,
`
`v.
`
`DIEBOLD NIXDORF, INC.,1
`Patent Owner.
`_______________
`
`Case CBM2016-00034
`Patent 7,314,163
`______________
`
`
`
`
`
`Before BARBARA A. BENOIT, GEORGIANNA W. BRADEN, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`
`BENOIT, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Post-Hearing Briefing
`37 C.F.R. § 42.20(d)
`
`
`
`
`1 After institution of this covered business method patent review, Patent
`Owner changed its name. See Paper 18. We use Patent Owner’s updated
`name in this Order.
`
`
`
`CBM2016-00034
`Patent 7,314,163
`
`A covered business method patent review of claims 1–24 of U.S.
`Patent No. 7,314,163 B1 (Ex. 1001, “the ’163 patent” or “the challenged
`patent”) has been instituted. Paper 9 (“Decision to Institute” or “Inst.
`Dec.”). One issue in the proceeding is whether claims 1–24 are directed to
`patent-ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 43.
`During this proceeding, along with its Reply to Patent Owner’s
`Response under 37 C.F.R. § 42.220, Petitioner filed a decision from an
`investigation conducted by the International Trade Commission, In the
`Matter of Certain Automated Teller Machines, ATM Modules, Components
`Thereof, and Products Containing Same, No. 337-TA-972, titled the Initial
`Determination Granting Respondents’ Motion for Summary Determination
`that the Asserted Claims of U.S. Patent No. 7,314,163 Are Invalid Under
`35 U.S.C. § 101 (Ex. 1026) (“ITC Decision”).2 After receiving briefing
`from both sides, the Administrative Law Judge granted “Respondents
`Nautilus Hyosung America, Inc., Nautilus Hyosung Inc., and HS Global,
`Inc.’s . . . motion for summary determination that the asserted claims of U.S.
`Patent No. 7,314,163 . . . are directed to ineligible subject matter under 35
`U.S.C. § 101.” ITC Decision, 1, 27. Specifically, the Administrative Law
`Judge held:
`
`
`2 Both parties previously identified International Trade Commission
`Investigation In the Matter of Certain Automated Teller Machines, ATM
`Modules, Components Thereof, and Products Containing Same, No.
`337-TA-972 as a judicial or administrative matter that would affect or be
`affected by a decision in this proceeding, as required by 37 C.F.R.
`§ 42.8(b)(2). Paper 2 (Petition), 2; Paper 5 (Patent Owner’s Mandatory
`Notices).
`
`2
`
`
`
`
`
`CBM2016-00034
`Patent 7,314,163
`
`The asserted claims of U.S. Patent No. 7,314,163 are directed to
`ineligible subject matter under 35 U.S.C. § 101, and it is my
`Initial Determination that this patent is terminated from the
`Investigation.
`
`ITC Decision, 27. The claims asserted in the ITC investigation—claims 20–
`24—are a subset of the claims at issue in this proceeding. See ITC Decision,
`2 (identifying claims 20–24 as the claims asserted in the ITC investigation).
`In this proceeding, Petitioner also filed with its Reply a Notice that the
`Commission would not review the Initial Determination issued by the
`Administrative Law Judge. Ex. 1027 (titled “Certain Automated Teller
`Machines, ATM Modules, Components Thereof, and Products Containing
`the Same, USITC Inv. No. 337-TA-972, Notice of Commission Decision
`Not to Review an Initial Determination Granting a Summary Determination
`that Claims 20-24 of U.S. Patent No. 7,314,163 Are Invalid Under 35 U.S.C.
`§ 101”).
`Subsequently, the parties came before the Board for a regularly
`scheduled oral argument on the merits on May 5, 2017. The hearing was
`presided over by Judges Benoit, Braden, and Begley. An issue arose during
`the hearing regarding what effect, if any, the ruling in the International
`Trade Commission investigation should have on this proceeding.
`Furthermore, in updating the panel at the hearing, Patent Owner
`indicated that the ITC Decision had not been appealed to the United States
`Court of Appeals for the Federal Circuit, but also indicated that possibly the
`time to appeal had not yet run.
`In these particular circumstances, we exercise our authority under
`37 C.F.R. § 42.20(d) to order post-hearing briefing on the following
`questions:
`
`3
`
`
`
`
`
`CBM2016-00034
`Patent 7,314,163
`
`1. What effect, if any, does the ITC Decision have on the
`Board’s authority
`to decide and
`the
`justiciability
`(including mootness) of
`the
`instituted grounds of
`unpatentability challenging claims 20–24 of the ’163
`patent?
`
`2.
`
`To what extent does the ITC Decision address the same or
`substantially similar arguments and evidence regarding
`subject matter eligibility of claims 20–24 of the ’163
`patent as present in this review?
`
`3. What were the evidentiary standards and the allocation of
`the burden of proof applied in the ITC Decision?
`
`4. May the ITC Decision be appealed, or has the time period
`for filing a notice of appeal passed?
`
`ORDER
`Each party is requested, but not required, to submit a brief addressing
`the foregoing questions no later than 5 p.m. ET on May 26, 2017. A party
`that elects not to timely file a brief will be deemed to have waived the right
`to brief this issue or otherwise be heard on this issue before entry of a Final
`Written Decision. Each party shall be limited to five (5) pages for its
`respective brief, which shall be limited to the legal questions listed above
`and shall not be used as an opportunity to reargue the facts of the proceeding
`or submit new evidence. Unless further ordered by the Board, no opposition
`or reply briefs shall be submitted following the initial exchange of briefs.
`SO ORDERED.
`
`
`
`
`
`
`
`
`4
`
`
`
`CBM2016-00034
`Patent 7,314,163
`
`PETITIONER:
`Timothy W. Riffe
`Nicholas Jepsen
`Linhong Zhang
`Daniel Tishman
`Kevin Wheeler
`FISH & RICHARDSON P.C.
`CBM42590-0001CP1@fr.com
`PTABInbound@fr.com
`tishman@fr.com
`kwheeler@fr.com
`
`PATENT OWNER:
`Jason P. Cooper
`Christopher B. Kelly
`ALSTON & BIRD LLP
`Jason.Cooper@alston.com
`Chris.Kelly@alston.com
`
`
`
`
`5
`
`
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