`571-272-7822
`
`
`Paper No: 77
`
` Entered: September 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner
`
`v.
`
`PROXYCONN, INC.,
`Patent Owner
`____________
`
`Case IPR2012-00026
`Case IPR2013-00109
`Patent 6,757,717
`____________
`
`
`
`Before SALLY C. MEDLEY, THOMAS L. GIANNETTI, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`
`A telephone conference call in these joined proceedings was held on
`August 27, 2015. The participants included John D. Vandenberg, Esq., for
`the Petitioner, Bryan K. Wheelock, Esq., for the Patent Owner, and
`Administrative Patent Judges Sally C. Medley, Thomas L. Giannetti, and
`Mitchell G. Weatherly.
`The conference was requested by the Petitioner to discuss procedures
`following the Federal Circuit’s remand of the case to the Board.
`DISCUSSION
`On February 19, 2014, the Board issued a Final Written Decision in
`
`accordance with 37 C.F.R. § 42.73. Paper 73.1 Both parties appealed the
`decision to the United States Court of Appeals for the Federal Circuit. On
`June 16, 2015, the Federal Circuit issued a decision affirming-in-part,
`reversing-in-part, and vacating-in-part the Board’s decision, and remanding
`the case to the Board. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292
`(Fed. Cir. 2015). The Federal Circuit decided that the Board had erred in its
`construction of three terms appearing in the claims of subject patent, U.S.
`Patent No. 6,757,717. As a result, the Federal Circuit vacated the Board’s
`determination that several claims of the ʼ717 patent were unpatentable. The
`Federal Circuit’s mandate issued on August 25, 2015. Paper 76.
`
`The parties were unable to reach agreement on post-remand
`procedures, and therefore, Petitioner sought the Board’s guidance.
`Petitioner proposed that the Board permit the parties each to file 15-page
`briefs addressing the effect of the Federal Circuit’s claim construction
`rulings. The briefs would be limited to the eight claims for which the
`
`
`1 Citations are to the record in IPR2012-00026; similar papers may be found
`in the record of IPR2013-00109.
`
`
`
`2
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`Board’s decision of unpatentability was vacated and to the grounds and
`references considered in the Board’s decision regarding those eight claims.
`Under this proposal there would be no new evidence presented. Petitioner
`proposed that the briefs be filed simultaneously, and within a week.
`
`Patent Owner opposed this proposal. Patent Owner expressed the
`view that additional briefing was unnecessary and would prejudice Patent
`Owner by delaying the proceedings. Both parties recognized, however, that
`the Board would have to reconsider the evidence on remand in light of the
`Federal Circuit’s rulings on claim construction and would not be in a
`position to decide the case for either party without further analysis.
`ORDER
`Having considered the arguments of the parties, it is hereby
`
`ORDERED that the parties shall each file an additional brief in these
`
`proceedings;
`
`FURTHER ORDERED that the briefs shall be limited to fifteen pages
`and both filed no later than September 11, 2015;
`
`FURTHER ORDERED that the briefs shall address the effect of the
`Federal Circuit’s June 16, 2015, decision on our Final Written Decision,
`specifically as to the patentability of claims 1, 3, 6, 7, 9, 10, 22, and 23 of
`the ʼ717 patent;
`
`FURTHER ORDERED that no new prior art references or other
`evidence shall be presented by either party beyond that considered in the
`Board’s Final Written Decision (including Mattis in combination with
`DRP);
`
`
`
`3
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`FURTHER ORDERED that no replies are authorized at this time.
`
`Should the parties wish to file a reply, they must contact the Board for
`authorization.
`
`
`
`4
`
`
`
`IPR2012-00026 and IPR2013-00109
`Patent 6,757,717
`
`For Patent Owner
`
`Matthew L. Cutler
`Harness, Dickey & Pierce, PLC
`mcutler@hdp.com
`
`Bryan K. Wheelock
`Harness, Dickey & Pierce, PLC
`bwheelock@hdp.com
`
`Douglas A. Robinson
`Harness, Dickey & Pierce, PLC
`drobinson@hdp.com
`
`
`
`For Petitioner
`
`John D. Vandenberg
`Klarquist Sparkman LLP
`john.vandenberg@klarquist.com
`
`Stephen J. Joncus
`Klarquist Sparkman LLP
`stephen.joncus@klarquist.com
`
`
`
`5
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