`571-272-7822
`
` Paper 32
`
`
`Entered: January 3, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD
`REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case1 IPR2015-01956 (Patent 6,519,581 B1)
`Case IPR2015-01957 (Patent 6,519,581 B1)
`____________
`
`Before MEREDITH C. PETRAVICK, BEVERLY M. BUNTING, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`ORDER
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`A consolidated oral hearing for IPR2015-01956 and IPR2015-01957
`for U.S. Patent No. 6,519,581 B1 (“the ’581 patent”) took place on
`December 19, 2016.
`In these proceedings, Intellectual Ventures identified itself as the
`owner of the ’581 patent and has participated in each proceeding as the
`Patent Owner. See IPR2015-01956, Paper 20, 3–6. However, Petitioner
`maintains that Intellectual Ventures does not own the ’581 patent and should
`not be allowed to participate in these inter partes reviews. See IPR2015-
`01956, Paper 27, 3. In particular, Petitioner refers to the determination, by
`the United States District Court for the Western District of Pennsylvania,
`that Intellectual Ventures does not own the ’581 patent due to a break in the
`chain of title, whereby the assignment between the alleged assignor
`AllAdvantage.com and assignee Alset did not include the ’581 patent. See
`IPR2015-01956, Paper 20, 3–6. In that decision, the district court concluded
`that Intellectual Ventures lacked standing to bring its patent infringement
`suits against defendants, including Petitioner. Ex. 1017, 24. Subsequently,
`Intellectual Ventures appealed the district court’s decision to the Federal
`Circuit. Ex. 3001. This appeal is currently pending.
`In response to Petitioner’s argument that Intellectual Ventures is not
`the Patent Owner, Intellectual Ventures argued at the oral hearing that if it is
`not the Patent Owner, then these inter partes reviews must be terminated
`because Petitioner has not served the Petition on the Patent Owner, or its
`designated representative, according to the requirements of 35 U.S.C. §
`312(a)(5). See IPR2015-01956, Paper 8, 13–15, Paper 9, 15, Paper 10, 4–5.
`
`2
`
`
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`At the oral hearing and in previous briefing, Petitioner provided some
`details regarding the service of the Petition. However, for clarity of the
`record in each proceeding, Petitioner is instructed to file a separate paper
`indicating the specific dates on which service under 35 U.S.C. § 312(a)(5) of
`the Petition occurred and the identity of the particular entity that was served.
`This information should be submitted in the form of a list or table with each
`entry providing the date of service and entity or entities served in
`chronological order. For each entity served, Petitioner must also include a
`short explanation for why Petitioner maintains that the service was effective
`and complete. As example is provided below:
`
`1. Service on [DATE] on [ENTITY] was effective and complete
`because . . . .
`2. Service on [DATE] on [ENTITY] was effective and complete
`because . . . .
`
`
`Patent Owner may file a response to Petitioner’s declaration that
`addresses each entry in a corresponding table or list.
`1. Service on [DATE] on [ENTITY] was not effective because . . . .
`2. Service on [DATE] on [ENTITY] was not effective because . . . .
`
`
`Each submission by the parties must not exceed five (5) pages. Petitioner is
`instructed to file this information by January 12, 2017. If Patent Owner files
`a response, it may do so by January 19, 2017.
`
`Accordingly, it is
`
`ORDERED that by January 12, 2017, Petitioner files in each of
`IPR2015-01956 and IPR2015-01957 respectively a list or table (not to
`
`3
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`exceed five (5) pages) describing the service of the Petition pursuant to 35
`U.S.C. § 312(a)(5) in chronological order; and
`
`FURTHER ORDERED that by January 19, 2017, Patent Owner may
`file in each of IPR2015-01956 and IPR2015-01957 respectively a response
`to Petitioner’s submission that does not exceed five (5) pages.
`
`
`4
`
`
`PETITIONER:
`Joseph A. Micallef
`Russell E. Cass
`Erik J. Carlson
`Ryan Phelan
`Vernon M. Winters
`SIDLEY AUSTIN LLP
`iprnotices@sidley.com
`rcass@sidley.com
`ecarlson@sidley.com
`rphelan@sidley.com
`vwinters@sidley.com
`
`
`
`PATENT OWNER:
`James P. Murphy
`Henry A. Petri, Jr.
`Q Todd Dickinson
`POLSINELLI PC
`jpmurphy@polsinelli.com
`hpetri@polsinelli.com
`tdickinson@polsinelli.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTURAL VENTURES
`tim@intven.com
`jhietala@intven.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
