`571-272-7822
`
`
`
` Paper No. 8
`Entered: December 16, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`KLAUSTECH, INC.,
`Patent Owner.
`____________
`
`Case CBM2016-00096
`Patent 6,128,651
`____________
`
`
`Before MICHAEL R. ZECHER, CHRISTOPER M. KAISER, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`I. INTRODUCTION
`
`
`
`A conference call in this proceeding was held on December 15, 2016,
`
`between the parties and Judges Zecher, Kaiser, and Cherry. Petitioner, Google
`
`Incorporated (“Google), initiated the conference call to seek authorization to file a
`
`reply to the Preliminary Response filed by Patent Owner, KlausTech Incorporated
`
`(“KlausTech”), on December 6, 2016. Paper 7. In particular, Google seeks a reply
`
`narrowly tailored to address how the decision issued by the U.S. Court of Appeals
`
`for the Federal Circuit in Unwired Planet, LLC v. Google Inc., No. 2014-00006,
`
`2016 WL 6832978 (Fed. Circ. Nov. 21, 2016) (“Unwired decision”) impacts
`
`whether at least one claim challenged in this proceeding satisfies the financial
`
`prong of the covered business method (“CBM”) eligibility test under Section 18 of
`
`the America Invents Act (“AIA”).
`
`
`
`II. DISCUSSION
`
`Google began the conference call by explaining that the Unwired decision
`
`held that the Board’s reliance on whether the patent claims activities “incidental
`
`to” or “complementary to” a financial activity as the legal standard for determining
`
`CBM eligibility was not in accordance with the explicit requirements of Section 18
`
`of the AIA. Unwired, 2016 WL 6832978, at *5. Google represented that it relied,
`
`in part, upon this standard in its Petition to argue that at least one claim challenged
`
`in this proceeding satisfies the financial prong of the CBM eligibility test. Google
`
`further noted that, because KlausTech’s Preliminary Response was filed on
`
`December 6, 2016, after the Federal Circuit issued the Unwired decision on
`
`November 21, 2016, KlausTech was afforded an opportunity to, and did indeed,
`
`2
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`address the purported change in how the challenged claims should be analyzed to
`
`determine whether at least one claim satisfies the financial prong of the CBM
`
`eligibility test. Consequently, Google requested authorization to file a four-page
`
`reply narrowly tailored to address the new guidance regarding the financial prong
`
`of the CBM eligibility test provided by the Federal Circuit in the Unwired
`
`decision.
`
`In response, KlausTech represented that it opposes Google’s request to file a
`
`reply because it would be unfair for Google to introduce new arguments and
`
`evidence as to how at least one claim challenged in this proceeding satisfies the
`
`financial prong of the CBM eligibility test, especially after it already filed its
`
`Preliminary Response. In response to an inquiry from the panel as to whether
`
`KlausTech specifically opposed allowing Google to file a reply narrowly tailored
`
`to address the new guidance provided by the Federal Circuit in the Unwired
`
`decision, KlausTech clarified that it did not oppose such a reply, with the
`
`understanding that it be limited in scope to only addressing the impact of the
`
`Unwired decision on this proceeding.
`
`After a brief deliberation, we granted Google’s request to file a four-page
`
`reply narrowly tailored to address how the new guidance regarding the financial
`
`prong of the CBM eligibility test provided by the Federal Circuit in the Unwired
`
`decision impacts this proceeding. We clarified that no new, additional evidence of
`
`any kind is permitted to be filed with this reply.
`
`
`
`3
`
`
`
`CBM2016-00096
`Patent 6,128,651
`
`Accordingly, it is:
`
`III. ORDER
`
`ORDERED that Google’s request to file a reply to KlausTech’s Preliminary
`
`Response is granted;
`
`FURTHER ORDERED that Google’s reply shall be tailored narrowly to
`
`address how the new guidance regarding the financial prong of the CBM eligibility
`
`test provided by the Federal Circuit in the Unwired decision impacts this
`
`proceeding;
`
`FURTHER ORDERED that Google’s reply is limited to four pages and due
`
`no later than Friday, December 23, 2016;
`
`FURTHER ORDERED Google shall not introduce or file new, additional
`
`evidence of any kind with this reply; and
`
`FURTHER ORDERED that KlausTech is not authorized to file a responsive
`
`submission.
`
`4
`
`
`
`5
`
`CBM2016-00096
`Patent 6,128,651
`
`For PETITIONER:
`
`Michael T. Hawkins
`Christopher C. Hoff
`Fish & Richardson P.C.
`hawkins@fr.com
`hoff@fr.com
`CBM19473-0342CP1@fr.com
`
`
`
`For PATENT OWNER:
`
`Amedeo F. Ferraro
`Thomas H. Martin
`Wesley C. Meinerding
`Alfred Y. Chu
`Martin & Ferraro, LLP
`aferraro@martinferraro.com
`tmartin@martinferraro.com
`wmeinerding@martinferraro.com
`alfred.chu@martinferraro.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
