Trials@uspto.gov
`571-272-7822
`
`
` IPR2016-00213, Paper 40
`IPR2016-00295, Paper 32
`
`Entered: January 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
` IPR2016-00213, Paper 40
`IPR2016-00295, Paper 32
`
`Entered: January 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FPUSA, LLC,
`Petitioner,
`
`v.
`
`M-I LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00213 (Patent 9,004,288 B2)
`Case IPR2016-00295 (Patent 9,074,440 B2)
`____________
`
`
`Before JAMES A. TARTAL, CARL M. DEFRANCO, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`On January 24, 2017, a conference call was held between the panel and
`counsel for the parties to discuss two issues: (1) Petitioner’s request for an
`extension of its deadline to file a Reply, and (2) Patent Owner’s request for
`authorization to file a motion to terminate these proceedings due to Petitioner’s
`alleged failure to identify all of the real parties-in-interest.
`Regarding the first issue, the Scheduling Order in these cases originally
`specified September 2, 2016 as Due Date 1 and December 2, 2016 as Due Date 2.
`Paper 15, 6.1 The parties subsequently stipulated to an extension of Due Date 1
`until October 21, 2016. Paper 31, 1. Petitioner argues that its deadline to file a
`Reply brief should be extended because it agreed to an extension of Patent
`Owner’s deadline to file a Patent Owner Response, and because Petitioner’s
`ongoing bankruptcy proceeding has increased the amount of time necessary for
`Petitioner to prepare its Reply. Petitioner stipulated that its Reply would not
`include any new evidence, such that no further adjustments to the schedules of
`these proceedings would be necessary. Petitioner stated that it could be prepared
`to file its Reply by February 3, 2017. Patent Owner argued that Petitioner waited
`too long to request an extension, and that permitting a Reply to be filed at this
`stage of the proceedings would be unfair to Patent Owner. When asked, during the
`conference call, how Patent Owner would be prejudiced if Petitioner were
`permitted to file a Reply with no new evidence by February 3, 2017, Patent Owner
`responded that it would have to prepare slides regarding the arguments in the
`
`
`1 Citations in this Order refer to the papers in IPR2016-00213. The same or
`substantially similar papers appear in IPR2016-00295.
`2
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`Reply by March 1, 2017, the date set for the hearing in these cases. In our view, a
`period of almost a month permits Patent Owner adequate time to review an
`argument-only Reply and prepare responsive remarks for the hearing. Although
`we agree with Patent Owner that Petitioner should have sought an extension at an
`earlier date, the Board can excuse late action when doing so is in the interests of
`justice. See 37 C.F.R. § 42.5(c)(3). Here, given Petitioner’s stipulation that the
`Reply will contain only argument responding to the Patent Owner Response and
`will not contain any new evidence, we find that permitting Petitioner to file a
`Reply by February 3, 2017 would be in the interests of justice. The parties agreed
`during the conference call that, because the Reply will contain no new evidence, no
`further adjustments to the schedule of these proceedings are necessary.
`With respect to the second issue, Patent Owner argued that it has taken
`discovery from Petitioner regarding the relationship between Petitioner and three
`other entities. According to Patent Owner, the information it has gathered shows
`that the boundaries between those three entities and Petitioner are sufficiently
`blurred that the three entities should have been named as real parties-in-interest in
`these proceedings. Petitioner argues that the identification of real parties-in-
`interest in Petitioner’s Mandatory Notices is correct, and the information Patent
`Owner obtained through discovery is consistent with Petitioner’s listing of the real
`parties-in-interest. During the conference call, we granted Patent Owner’s request
`for authorization to file a motion to terminate. Specifically, we authorized Patent
`Owner to file a motion of no more than 10 pages by February 3, 2017. We also
`authorized Petitioner to file an opposition of no more than 10 pages by February
`10, 2017. Given the advanced stage of these proceedings, we did not authorize a
`
`3
`
`
`
`IPR2016-00213 (Patent 9,004,288 B2)
`IPR2016-00295 (Patent 9,074,440 B2)
`
`
`
`reply brief in connection with this motion, but we indicated that if Patent Owner
`believes that a reply brief is necessary after reviewing Petitioner’s opposition,
`Patent Owner may request another conference call with the panel.
`It is hereby:
`ORDERED that Petitioner is permitted to file a Reply containing no new
`evidence by February 3, 2017;
`ORDERED that Patent Owner is authorized to file a motion to terminate of
`no more than 10 pages by February 3, 2017; and
`ORDERED that Petitioner is authorized to file an opposition to Patent
`Owner’s motion to terminate of no more than 10 pages by February 10, 2017.
`
`
`
`For PETITIONER:
`
`Brad Chin
`Kevin Tamm
`BRACEWELL & GIULIANI LLP
`Brad.Chin@bgllp.com
`kevin.tamm@bgllp.com
`
`For PATENT OWNER:
`
`Barry Schindler
`Heath Briggs
`GREENBERG TRAURIG, LLP
`schindlerb@gtlaw.com
`briggsh@gtlaw.com
`Schlumberger-440-228-IPRs@gtlaw.com
`
`4
`
`
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