`571-272-7822
`
`
`
` Paper 62
`
`Entered: September 1, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01149
`Patent 6,023,783
`__________
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`DECISION
`
`Authorizing Opposition Briefing
`to Petitioner’s Unopposed Motion to Withdraw
`Challenged Claims 55–59
`
`37 C.F.R. §§ 42.5, 42.22, 42.23
`
`
`
`
`
`
`
`IPR2014-001149
`Patent 6,023,783
`
`
`The instant matter before the Board relates to an extended sequence of
`
`procedural requests initiated by Petitioner, Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson (collectively “Ericsson”), commencing
`
`with a Motion to Correct Petition and Motion to Modify Decision to Institute
`
`(Paper 27, “Motion to Correct Petition”), filed April 30, 2015. After
`
`considering briefs filed by both parties, we denied Ericsson’s Motion to
`
`Correct Petition by Order entered May 19, 2015. (Paper 31).
`
`Subsequently, on May 29, 2015, Ericsson unilaterally and without
`
`prior authorization from the Board, filed a paper captioned “Petitioner’s
`
`Notice of Withdrawal of Challenged Claims 55–59.” (Paper 32, the “Notice
`
`to Withdraw”). We treated Ericsson’s Notice to Withdraw as an
`
`unauthorized motion and, pursuant to our authority under 37 C.F.R.
`
`§ 42.7(a), entered an Order directing that the Notice to Withdraw be
`
`expunged from the record. Paper 34.
`
`After that, Ericsson requested a teleconference with the Board and
`
`sought leave to file a motion to withdraw its challenge to claims 55–59 in
`
`this IPR proceeding. See Paper 36. A teleconference was held on June 23,
`
`2015, attended by both parties, to consider Ericsson’s request. Id. At the
`
`teleconference, Patent Owner Intellectual Ventures I LLC (“Intellectual
`
`Ventures”) indicated that it did not oppose Ericsson withdrawing its
`
`challenge to claims 55–59 in this IPR proceeding and indicated that it
`
`waived any right to file an opposition. Id. On June 24, 2015, we entered an
`
`Order authorizing Ericsson to file its requested motion and, in the Order, we
`
`directed Ericsson to explain where the Board derives the authority to
`
`withdraw claims once trial has been instituted in an IPR proceeding. Id.
`
`
`
`2
`
`
`
`IPR2014-001149
`Patent 6,023,783
`
`
`Pursuant to our Order of June 24, 2015 (Paper 36), Ericsson filed its
`
`Petitioners’ Unopposed Motion to Withdraw Challenged Claims 55–59 on
`
`August 20, 2015. (Paper 52, the “Unopposed Motion”). Thereafter, on
`
`August 24, 2015, counsel for Intellectual Ventures contacted the Board and,
`
`in essence, notified us that the scope of relief requested in Ericsson’s
`
`Unopposed Motion differed from the extent of relief which Intellectual
`
`Ventures previously did not oppose. At that time, Intellectual Ventures
`
`requested leave to file an opposition to Ericsson’s Unopposed Motion.
`
`On August 26, 2015, this IPR proceeding came before the Board for
`
`regularly scheduled oral argument hearing on the merits of Ericsson’s IPR
`
`Petition. At the conclusion of the hearing, the panel entertained comments
`
`and argument from counsel concerning the extent to which Ericsson’s
`
`Unopposed Motion is, indeed, unopposed.
`
`After considering the foregoing events and hearing the comments and
`
`arguments of counsel, we will authorize Intellectual Ventures to file an
`
`opposition to Ericsson’s Unopposed Motion and will, furthermore, authorize
`
`Ericsson to file a reply to such opposition in accordance with the schedule
`
`detailed below.
`
`It is hereby
`
`ORDER
`
`ORDERED, that Intellectual Ventures is authorized to file an
`
`opposition of no more than 15 pages to Ericsson’s Unopposed Motion on or
`
`before September 30, 2015.
`
`ORDERED, that Ericsson is authorized to file a reply of no more
`
`than 5 pages to Intellectual Venture’s opposition on or before October 30,
`
`2015.
`
`
`
`3
`
`
`
`IPR2014-001149
`Patent 6,023,783
`
`
`
`
`For PETITIONER:
`
`J. ROBERT BROWN, JR.
`CHARLES ROGERS
`AMY LAVALLE
`CONLEY ROSE P.C.
` rbrown@dfw.conleyrose.com
`crogers@conleyrose.com
`alavalle@dfw.conleyrose.com
`
`
`
`For PATENT OWNER:
`
`LORI GORDON
`MICHAEL SPECHT
`DONALD COULMAN
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Lgordon-ptab@skgf.com
`Mspecht-ptab@skgf.com
`dcoulman@intven.com
`
`4
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