`571-272-7822
`
`
`
`
`
`
`Paper 27
`Entered: September 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTERNATIONAL BUSINESS MACHINES CORP.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Case IPR2014-01465
`Patent No. 6,826,694 B1
`
`
`
`
`
`
`
`
`
`Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`On September 25, 2015, a conference call was held between counsel
`
`
`
`
`
`for the parties and Judges Moore, Petravick, and Wood. Patent Owner
`
`provided a court reporter for the conference call and stated that it will file
`
`the transcript.
`
`
`
`IPR2014-01465
`Patent 6,826,694 B1
`
`Patent Owner initiated the call to discuss a dispute as to whether
`
`Petitioner is estopped from maintaining this proceeding pursuant to 35
`
`U.S.C. § 315(e)(1). Section 315(e)(1) states:
`
`The petitioner in an inter partes review of a claim in a patent
`under this chapter that results in a final written decision under
`section 318(a) . . . may not request or maintain a proceeding
`before the Office with respect to that claim on any ground that
`the petitioner raised or reasonably could have raised during that
`inter partes review.
`
`Claim 1 of U.S. Patent No. 6,826,694 B1, the sole claim, is the subject of
`
`this proceeding and was the subject of International Business Machines
`
`Corp. v. Intellectual Ventures II, LLC, Case IPR2014-00587. A Final
`
`Written Decision was entered in IPR2014-00587 on September 23, 2015.
`
`Inter partes review in this proceeding was instituted based on a sole ground
`
`of claim 1 being anticipated by Estrin 1987.1 During the call, the parties
`
`disputed whether Petitioner reasonably could have raised the Estrin 1987
`
`ground during IPR2014-00587 and, if the Estrin 1987 ground could have
`
`been reasonably raised, whether this proceeding should be terminated in its
`
`entirety or terminated as to Petitioner only.
`
`Based upon the information presented during the call, Patent Owner
`
`was authorized to file a motion to terminate this proceeding no later than
`
`September 30, 2015 and Petitioner was authorized to file an opposition to
`
`the motion no later than October 6, 2015. The motion and opposition were
`
`limited to 7 pages each. No reply was authorized.
`
`
`1Deborah Estrin, et al., Visa Scheme for Inter-Organization Network
`Security, IEEE SYMPOSIUM ON SEC. AND PRIVACY (Apr. 27–28, 1987) (Ex.
`1005, “Estrin 1987”).
`
`2
`
`
`
`IPR2014-01465
`Patent 6,826,694 B1
`
`Both parties requested an oral hearing in this proceeding, and an oral
`
`hearing was scheduled for October 2, 2015. Paper 26, 1. In light of the
`
`circumstances of this proceeding, the oral hearing is rescheduled for October
`
`21, 2015 at 2:00 p.m. Eastern Time.
`
`
`
`Accordingly, it is:
`
`ORDERED that Patent Owner is authorized to file a motion to
`
`terminate, no more than 7 pages, no later than September 30, 2015;
`
`
`
`FURTHER ORDERED that Petitioner is authorized to file an
`
`opposition, no more than 7 pages, no later than October 6, 2015; and
`
`FURTHER ORDERED that the oral hearing is rescheduled for
`
`October 21, 2015.
`
`
`
`PETITIONER:
`
`Kenneth R. Adamo
`Eugne Goryunov
`Kirkland & Ellis LLP
`Kenneth.adamo@kirkland.com
`Eugene.goryunov@kirkland.com
`
`
`
`
`
`
`PATENT OWNER:
`
`Brenton R. Babcock
`Ted M. Cannon
`Knobbe, Martens, Olson & Bear, LLP
`2brb@knobbe.com
`2tmc@knobbe.com
`
`
`
`3
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