Paper No. 17
`
`Entered: November 21, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON EP, INC. and SCREEN LOGIX, LLC,
`Petitioner,
`
`v.
`
`DERRICK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00642
`Patent 7,228,971 B2
`____________
`
`
`Before BARRY L. GROSSMAN, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Entered: November 21, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AXON EP, INC. and SCREEN LOGIX, LLC,
`Petitioner,
`
`v.
`
`DERRICK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00642
`Patent 7,228,971 B2
`____________
`
`
`Before BARRY L. GROSSMAN, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`
`On November 17, 2016, a call was conducted with counsel for
`Petitioners, Axon EP, Inc. and Screen Logix, LLC, counsel for Patent
`Owner, Derrick Corp., and Judges Grossman, DeFranco, and Mayberry. As
`background, on February 19, 2016, Petitioners filed a petition (the
`“Petition”) requesting inter partes review of claim 6 of U.S. Patent No.
`7,228,971 B2 (Ex. 1001, “the ’971 patent”). The Petition names Axon EP,
`Inc., Screen Logix, LLC, HitecVision V, L.P., Axon Energy Products AS,
`Axon Pressure Products, Inc., and Drilling Controls, Inc. as real parties-in-
`interest. We instituted trial on August 29, 2016. Patent Owner’s Response
`is due on November 22, 2016.
`Patent Owner requested the call seeking authorization to file a Motion
`to Terminate this proceeding because Petitioners failed to name all real
`parties-in-interest in the Petition. During the call and separate from this
`issue, Patent Owner requested authorization to file videotaped deposition
`testimony as an exhibit in this proceeding.
`
`
`The Motion to Terminate
` Patent Owner sought authorization to file a Motion to Terminate this
`proceeding because the Petition failed to name Mr. Jeffrey Walker as a real
`party-in-interest. The parties indicated that Mr. Walker is the President of
`Screen Logix, LLC, a named real party-in-interest.
`Patent Owner proffered that it learned that Mr. Walker exercises
`considerable control over this proceeding during a deposition in a parallel
`litigation. Patent Owner argued that, because Mr. Walker is not named a
`real party-in-interest in this proceeding, he will be free to challenge the
`’971 patent again in a new inter partes proceeding or in future litigation.
`
`
`
`2
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`
`Petitioners responded that Mr. Walker’s involvement reflects his
`position as President of a named real party-in-interest and Petitioners dispute
`that Mr. Walker, in his individual capacity, is a real party in-interest. During
`the call, Petitioners’ counsel cited previous Board decisions finding that a
`sole owner of a petitioner or executives and board members of a petitioner
`were not real parties-in-interest. See 1964 Ears, LLC v. Jerry Harvey Audio
`Holding, LLC, Case IPR2016-00494 (PTAB July 20, 2016) (Paper 21); Zero
`Gravity Inside, Inc. v. Footbalance Sys. OY, Case IPR2015-01769 (PTAB
`Feb. 12, 2016) (Paper 17). During the call, Petitioner volunteered to update
`its Mandatory Notices to add Mr. Walker as a real party-in-interest provided
`such an addition would not change the Petition’s filing date.
`As we stated in the call, we do not authorize Patent Owner’s Motion
`to Terminate as we determine, at this time, that Patent Owner’s contentions
`do not warrant a Motion to Terminate. 35 U.S.C. § 312(a) states, in relevant
`part, “[a] petition [for inter partes review] may be considered only if . . . (2)
`the petition identifies all real parties in interest.” In our precedential
`decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., the Board
`determined that 35 U.S.C. § 312(a) is not jurisdictional and a petition may
`be corrected, including adding a real party-in-interest, without assigning a
`new filing date. See Case IPR2015-00739 at 6 (PTAB March 4, 2016)
`(Paper 38) (precedential). We determine that, at this stage of the proceeding
`and in light of Patent Owner’s proffered facts, Petitioners may update their
`Mandatory Notices without a change in the filing date of the Petition.
`Patent Owner is free to pursue this issue in its Patent Owner
`Response. We permitted Petitioners to update their Mandatory Notices to
`include Mr. Walker as a real party-in-interest without changing the filing
`
`
`
`3
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`date of the Petition, provided that such an update was done by November 17,
`2016, to allow Patent Owner time to consider the issue before the due date of
`its Patent Owner Response. Petitioners’ counsel indicated in the call that
`such an action would be taken.1
`
`
`Videotaped Deposition Testimony
`Patent Owner also sought our permission to file, as an exhibit in this
`proceeding, videotaped deposition testimony from a deposition taken as part
`of this proceeding and, potentially, from depositions taken outside this
`proceeding. Petitioner consented to the videotaped deposition taken in this
`proceeding. We hereby authorize Patent Owner to file as an exhibit the
`videotaped deposition for any deposition taken in this inter partes review
`proceeding.2 37 C.F.R.§ 42.53(a) (“Parties may agree to video-recorded
`testimony, but may not submit such testimony without prior authorization of
`the Board. In addition, the Board may authorize or require live or video-
`recorded testimony.”). In addition to any exhibits of videotaped testimony,
`the Patent Owner must file as an exhibit a written transcript of the entire
`deposition.
`
`
`1 Petitioners filed their Second Updated Mandatory Notices under 37 C.F.R.
`§ 42.8(a) on November 17, 2016 as Paper 16. The update states that
`“Petitioners [] identify Mr. Walker as a real party-in-interest in order to
`make it known that any estoppel effect as a result of this proceeding applies
`to Mr. Walker and to put to rest any dispute from Patent Owner that Mr.
`Walker is a real party-in-interest.” Paper 16, 1–2.
`2 Patent Owner is reminded that exhibits filed using PTAB End to End
`(PTAB E2E) must be one of the following file types: pdf, mpeg, mpg, mp1,
`mp2, mp3, m1a, m2a, m1v, mpa, mpv. The file size must be less than 25
`Mbytes.
`
`
`
`4
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`
`As for depositions taken outside this inter partes review proceeding,
`we authorize the Patent Owner to file videotaped testimony as an exhibit
`provided Patent Owner 1) secures prior approval from Petitioners; and 2)
`files as an exhibit a written transcript of the entire deposition.
`
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s request for authorization to file a
`Motion to Terminate is denied;
`further ORDERED that Petitioners may update their Mandatory
`Notices to include Mr. Walker without a change in the filing date of the
`Petition;
`further ORDERED that we authorize Patent Owner to file videotaped
`deposition testimony taken during this proceeding as an exhibit in
`accordance with the requirements outlined above; and
`further ORDERED that we authorize Patent Owner to file videotaped
`deposition testimony not taken during this proceeding as an exhibit in
`accordance with the requirements outlined above, provided Patent Owner
`receives Petitioner’s prior approval.
`
`
`
`
`5
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`PETITIONER:
`
`Robinson Vu
`Paul Morico
`Thomas Rooney
`Lindsay Volpenhein
`BAKER BOTTS LLP
`robinson.vu@bakerbotts.com
`paul.morico@bakerbotts.com
`thomas.rooney@bakerbotts.com
`lindsay.volpenhein@bakerbotts.com
`
`For PATENT OWNER:
`
`Jason Mueller
`Jason Gaskill
`Melissa Rizzo
`Jay M. Mattappally
`ADAMS AND REESE, LLP
`jason.mueller@arlaw.com
`jason.gaskill@arlaw.com
`melissa.rizzo@arlaw.com
`jay.mattappally@arlaw.com
`
`Jeffrey S. Ginsberg
`David J. Cooperberg
`PATTERSON BELKNAP WEBB & TYLER LLP
`dcooperberg@pbwt.com
`jginsberg@pbwt.com
`
`
`
`
`
`
`
`6
`
`
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