`571-272-7822
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` Paper No. 14
` Entered: August 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`JOHN D. PROFANCHIK, SR.,
`Patent Owner.
`_______________
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`_______________
`
`Before KEVIN F. TURNER and GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`
`BRADEN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`
`
`A conference call in the above proceeding was held on August 16, 2016
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`between Jason E. Stach and Kevin D. Rodkey for Petitioner, Brian C. McCormack
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`and Charles Lu for Patent Owner, and Judges Braden and Turner. The call was
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`initiated by Patent Owner to inform the Board that it will not file a Patent Owner’s
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`Response or otherwise continue participating in this proceeding. Although Patent
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`Owner does not plan to participate in the proceeding, it does not concede the
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`unpatentability of the challenged claims, it is not cancelling the challenged claims,
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`and it is not requesting adverse judgment under 37 C.F.R. 42.73(b).
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`We informed Petitioner that Patent Owner’s participation is not required for
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`the proceeding to continue, because Petitioner bears the burden to show by a
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`preponderance of the evidence that the challenged claims are unpatentable. See
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`35 U.S.C. § 316(e). The burden of proof never shifts to Patent Owner. See
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`In re Magnum Oil Tools Int’l, Ltd., No. 2015-1300, slip op. at 25 (Fed. Cir.
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`July 25, 2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). We
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`also informed Petitioner that due to Patent Owner’s withdrawal from the
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`proceeding, we will not hold an oral hearing and the proceeding will be decided
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`based on the briefing.
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`Accordingly, unless the parties either (i) settle their dispute and file
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`settlement agreements with the Board as required under 35 U.S.C. § 317(b), or
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`(ii) Petitioner files a request for adverse judgment under 37 C.F.R. 42.73(b)
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`indicating that it is abandoning the proceeding, then a Final Written Decision will
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`issue by the statutory deadline. See 35 U.S.C. § 318. Any filings under 35 U.S.C.
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`§ 317(b) or 37 C.F.R. 42.73(b) should be received by the Board no later than
`
`November 18, 2016, to potentially avert the issuance a Final Written Decision.
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`
`
`
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`
`
`It is
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`ORDERED that Patent Owner is not required to participate in the instant
`
`proceeding;
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`FURTHER ORDERED that Due Date 7 listed the Scheduling Order
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`(Paper 12) is cancelled; and
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`FURTHER ORDERED that the parties are required to submit any filings
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`under 35 U.S.C. § 317(b) or 37 C.F.R. 42.73(b) to the Board no later than
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`November 18, 2016 to potentially prevent the issuance of a Final Written Decision.
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`
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`
`
`
`Case IPR2016-00268
`Patent 8,315,367 B2
`
`FOR PETITIONER:
`
`Kevin Rodkey
`Kevin.rodkey@finnegan.com
`
`Erika Arner
`Erika.arner@finnegan.com
`
`Jason Stach
`Jason.stach@finnegan.com
`
`
`
`FOR PATENT OWNER:
`
`William D. McSpadden
`William.mcspadden@bakermckenzie.com
`
`Brian McCormack
`Brian.mccormack@bakermckenzie.com
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