Trials@uspto.gov
`571-272-7822
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` Paper No. 46
` Entered: February 27, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU, and
`DUODECAD IT SERVICES LUXEMBOURG S.A R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`and RISER APPS LLC,1
`Petitioners,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01658
`Patent 8,364,839 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DISMISSING PETITION AND
`PETITIONER’S MOTION FOR ADVERSE JUDGMENT
`37 C.F.R. §§ 42.72, 42.73
`
`
`
`
`
`1 DUODECAD IT SERVICES LUXEMBOURG S.À R.L, et al. are present
`by virtue of the joinder of IPR2017-01179 to IPR2016-01658. Paper 25.
`
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`571-272-7822
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` Paper No. 46
` Entered: February 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU, and
`DUODECAD IT SERVICES LUXEMBOURG S.A R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`and RISER APPS LLC,1
`Petitioners,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01658
`Patent 8,364,839 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`DISMISSING PETITION AND
`PETITIONER’S MOTION FOR ADVERSE JUDGMENT
`37 C.F.R. §§ 42.72, 42.73
`
`
`
`
`
`1 DUODECAD IT SERVICES LUXEMBOURG S.À R.L, et al. are present
`by virtue of the joinder of IPR2017-01179 to IPR2016-01658. Paper 25.
`
`
`
`IPR2016-01658
`Patent 8,364,839 B2
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`
`INTRODUCTION
`I.
`A trial in IPR2016-01658 based on a petition filed by Petitioner,
`I.M.L. SLU (“IML”), was instituted on February 28, 2016, against claims 2,
`5, 9, 12, 16, and 19 of U.S. Patent No. 8,364,839 B2 (Ex. 1001, “the ’839
`patent”) held by Patent Owner, WAG Acquisition, LLC (“WAG”). Paper 10
`(“Inst. Dec.”). We instituted trial on the grounds that claims 2, 9, and 16 of
`the ’839 patent are unpatentable as obvious under 35 U.S.C. § 103(a) over
`Chen2 and Chen FH3; and that claims 5, 12, and 19 of the ’839 patent are
`unpatentable as obvious under 35 U.S.C. § 103(a) over Chen, Chen FH, and
`Willebeek.4 Paper 10 (“Inst. Dec.”).5
`On October 5, 2017, in IPR2017-01179, Duodecad IT Services
`Luxembourg S.À R.L., Accretive Technology Group, Inc., ICF Technology,
`Inc., and Riser Apps LLC (“Duodecad”) were joined to IPR2016-01658.
`Paper 25.6 Patent Owner filed a Patent Owner Response (Paper 18) and
`Petitioner filed a Petitioner Reply (Paper 24). Patent Owner also sought
`additional discovery from IML regarding undisclosed real parties-in-interest,
`which IML opposed. Paper 21 (“PO Mot. For Add. Disc.”); Paper 22.
`
`
`2 U.S. Patent 5,822,524, issued October 13, 1998 (Ex. 1002, “Chen”).
`3 File History of U.S. Application 505,488 (Ex. 1003, “Chen FH”).
`4 M. H. Willebeek-LeMair, et al, Bamba-Audio and Video Streaming Over
`the Internet, IBM J. RES. DEVELOP., Vol. 42, No. 2 (1998) (Ex. 1004,
`“Willebeek”).
`5 Each of the challenged claims depends directly from cancelled independent
`claims 1, 8, and 15 of the ’839 patent. See Duodecad IT Services
`Luxembourg S.À R.L., et al. v. WAG Acquisition, LLC, Case IPR2015-
`01036, Paper 17 (PTAB Oct. 20, 2016).
`6 In a related case, IPR2016-01656, IML is the sole Petitioner.
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`Shortly before the scheduled trial hearing on the merits, IML
`requested leave to withdraw the Petition in this proceeding. We conducted a
`joint hearing for IPR2016-01656 and IPR2016-01658 as scheduled on
`November 30, 2017. A public transcript of the hearing is included in the
`record. Paper 33 (“Public Tr.”).
`IML subsequently moved for adverse judgment for abandonment of
`contest. Paper 36 (“Mot. For Adv. J.”). Patent Owner opposes adverse
`judgment, filing an opposition under seal and a motion to seal. Paper 37
`(“WAG Opp. to Adv. J.”); Paper 38 (WAG Mot. to Seal). Subsequently,
`Duodecad filed a response to IML’s Motion for Adverse Judgment (Paper
`40, “Duodecad Resp. Adv. J.”). Duodecad also filed a Supplemental
`Response to Patent Owner’s Opposition under seal along with a motion to
`seal the supplemental response (Paper 44, “Duodecad Supp. Resp. to WAG
`Opp.”), and a redacted response (Paper 45).
`IML’s one-page request seeks to abandon the contest pursuant to 36
`C.F.R. § 42.73(b)(4) resulting in an adverse judgment. Mot. For Adv. J. 1.
`Patent Owner argues that this inter partes review should instead be
`terminated because IML failed to name at least one real party-in-interest,
`i.e., an entity known as CoolVision that was served with Patent Owner’s
`infringement suit more than one year before the filing date of the Petition,
`thus barring the Petition under 35 U.S.C. § 315(b). WAG Opp. to Adv. J.
`13–14. Duodecad argues that termination is not appropriate as WAG has
`failed to establish that CoolVision is a real party-in-interest or privy of IML.
`Duodecad Supp. Resp. to WAG Opp. 1–5.
`For the reasons discussed herein, the proceeding is terminated.
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`II. BACKGROUND
`Whether IML’s Petition named all real parties-in-interest (RPIs) has
`been an issue for some time. We first granted Patent Owner’s Motion for
`Discovery on this issue on April 27, 2017, where we ordered IML to
`produce:
`documents sufficient to show ownership and/or control of
`operations between Petitioner, Muly Litvak, and CoolVision,
`and documents sufficient to identify any role Muly Litvak,
`CoolVision[,] or its personnel or owners may have played in (i)
`deciding to file the Petition, (ii) drafting, supervising, approving,
`or otherwise exerting control over the content of the Petition, and
`(iii) financing or paying for the Petition.
`Paper 12, 9.
`On June 5, 2017, we conducted a teleconference with the parties
`during which we discussed Patent Owner’s request for authorization to move
`for additional discovery and several related discovery matters, including the
`absence of additional documentation, certain stipulations of fact, and
`possible interrogatories. Ex. 2006, Transcript of Teleconference (“Jun 5,
`2017 Tr.”). As we authorized (Jun 5, 2017 Tr., 23), Patent Owner moved for
`additional discovery (Paper 21) and IML Opposed (Paper 22). On
`November 3, 2017, we conducted another conference with the parties, but no
`agreement was reached on discovery as to real parties-in-interest matters.7
`On November 15, 2017, we entered a Trial Hearing Order in which
`we stated that, consistent with our previously entered Scheduling Order, we
`would conduct a consolidated hearing on the merits of each inter partes
`
`7 A transcript of our November 3, 2017 teleconference has not been made of
`record.
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`review on November 30, 2017. Paper 29, 2. We also stated that we would
`conduct a separate hearing to address Patent Owner’s outstanding Motion
`for Discovery of information concerning Petitioner’s real parties-in-interest.
`Id. at 3.
`On November 29, 2017, IML sent the Board e-mail correspondence
`with a proposed motion attached seeking to withdraw the Petitions in
`IPR2016-01658 and IPR2016-01656. We responded by e-mail that the
`hearing would take place as scheduled on November 30, 2017, and that we
`would take up the matter of IML’s proposed withdrawal from this
`proceeding and related proceeding IPR2016-01656 at the discovery hearing.
`On November 30, 2017, we conducted a public hearing on the merits
`and a separate discovery hearing, closed to the public (“Discovery
`Hearing”). Public Tr. 2:3–6. At the Discovery Hearing, the first issue
`addressed was IML’s proposed withdrawal of the Petition in this proceeding
`and related proceeding IPR2016-01656. Having not objected to the joinder
`of Duodecad to the instant proceeding, IML clarified that it sought only to
`withdraw its own participation in IPR2016-01658 and did not speak for
`Duodecad;8 in contrast, as the sole Petitioner in IPR2016-01656, IML
`indicated it sought to withdraw the Petition in IPR2016-01656. Paper 34,
`Transcript of Discovery Hearing held on Nov. 30, 2017 (“Discovery Hr’g.
`Tr.”) 7:1–12, 8:1–11.
`
`
`8 Although we instituted on Duodecad’s petition, which was substantially
`identical to that filed by IML, Duodecad’s petition would have been time
`barred under 35 U.S.C. § 315(b), but for the joinder provisions of 35 U.S.C.
`§ 315(c). Paper 25.
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`During the Discovery Hearing, we noted that the statutory scheme and
`our rules governing the conduct of these proceedings do not provide for
`withdrawing a petition. Discovery Hr’g. Tr. 9:9–12:16. See 35 U.S.C.
`§ 313; 37 C.F.R. § 42. We also noted that our rules allow a petitioner to
`request adverse judgment, although adverse judgment could have estoppel
`implications. Id. at 10:15–11:17, see 35 U.S.C. § 315(e), 37 C.F.R.
`42.73(b), (d).
`During the Discovery Hearing, Patent Owner reviewed its contentions
`concerning the relationship between IML and CoolVision in order to put the
`discovery Patent Owner seeks into context. Discovery Hr’g. Tr. 22:5–30:25.
`Counsel for Patent Owner emphasized that IML had advised him by “e-mail
`yesterday . . . that there’s not going to be any discovery.” Id. at 29:19–21.
`Arguing that Patent Owner’s “[discovery] motion is moot if we are not here”
`(id. at 30:21–22), IML’s counsel stated that she is not authorized to answer
`specific questions (id. at 34:1–2) about the subject matter and that IML’s
`further actions depend upon what is ordered and what options are open to
`IML to respond (id. at 31:19–32:17).
`Initially, Patent Owner stated that it was not opposed to Petitioner’s
`withdrawal and that “the appropriate ruling here would be adverse
`judgment.” Id. at 13:18–20. However, on December 1, 2017, Patent Owner
`sent an e-mail to the Board requesting (i) a conference to seek authorization
`to file a written opposition to Petitioner’s request for leave to withdraw, (ii)
`to move to require Petitioner to respond to discovery with items we
`identified at page 7 of the transcript of our conference call on November 3,
`2017, which has not been made of record, and (iii) to renew its request for
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`authorization to file a motion to terminate IPR2016-01656 and IPR2016-
`01658 as time barred as to all Petitioners. Ex. 3001.
`After fully considering the issues, on December 15, 2017, we entered
`an order requiring IML, by December 20, 2017, to file a motion for adverse
`judgment or to answer the following discovery requests: Request for
`Admission 1 and Interrogatories 1, 2(a)–(f), 2(i), 3(a)–(f), 4, 7(a)–(c), and
`8(a)–(c). Paper 35, 6–7. Our Order deferred any briefing on the status of
`Duodecad. Paper 35, 6.
`IML did not answer the discovery and filed a Motion for Adverse
`Judgment on December 20, 2017. Mot. For Adv. J. 1. On January 5, 2018,
`Patent Owner filed its Opposition to IML’s Motion for Adverse Judgment.
`WAG Opp. to Adv. J.. Patent Owner also filed a Motion for Entry of a
`Modified Protective Order and to Seal its Opposition to Petitioner’s Motion
`for Adverse Judgment. Paper 38.
`Pursuant to our Order (Paper 39), Duodecad filed a response to IML’s
`Motion for Adverse Judgement (Duodecad Resp. Adv. J.). Duodecad also
`filed a Supplemental Response to Patent Owner’s Opposition under seal
`along with a motion to seal the supplemental response (Duodecad Supp.
`Resp. to WAG Opp.), and a redacted response (Paper 45).
`
`III. CONFIDENTIALITY OF THE DISCOVERY HEARING
`TRANSCRIPT
`Before beginning our analysis, we address the issue of confidential
`subject matter. The Discovery Hearing was not open to the public, so that
`we could freely discuss any matters that IML might consider confidential.
`Our order of December 15, 2017, gave the parties until January 10, 18 to
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`identify subject matter in the Transcript of the Discovery Hearing that
`should be redacted from a public version of the transcript. Paper 37, 7. The
`parties’ proposed redactions to the sealed transcript sent to the Board by
`email on January 10, 2018, are under consideration. Therefore, the
`Transcript of the Discovery Hearing will remain under seal. Paper 34.
`In this Decision, we cite to arguments made at the Discovery Hearing.
`Our citations to documents that have been designated to contain confidential
`subject matter do not include quotations from those documents or reveal any
`information not discussed during the Discovery Hearing.
`
`IV. ANALYSIS
`The basis of Patent Owner’s Opposition to Petitioner’s Motion for
`Adverse Judgment is that the Petition is fatally flawed because Petitioner
`failed to name all the real parties-in-interest, in particular one party that
`would bar the Petition. Patent Owner argues it timely raised the issue of
`whether IML had named all RPIs and that we must address this issue before
`ruling on IML’s Motion for Adverse Judgment. WAG Opp. to Adv. J. 5–10.
`Duodecad responds that “Patent Owner seeks an unprecedented
`adverse inference that CoolVision is an RPI or in privity with IML as a
`sanction for alleged discovery abuses.” Duodecad Resp. Adv. J. 4.
`According to Duodecad, “IML has not violated any order,” but is merely
`exercising its choice from the options offered by the Board to comply with
`discovery or elect adverse judgment. Id. at 4–5. Furthermore, Duodecad
`argues that WAG has failed to show that CoolVision is an RPI based on the
`evidence of record. Id. at 6–10. Duodecad asserts that the proceeding
`should not be terminated as termination is not automatic and failure to name
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`an RPI does not deprive the Board of jurisdiction over this proceeding. Id.
`at 10–11 (citing Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case
`IPR2015-00739, slip op. at 5 (PTAB Mar. 4, 2016) (Paper 38)
`(precedential)). Duodecad’s supplemental response to WAG’s opposition
`further argues that WAG has not established that CoolVision is an RPI or
`privy to IML, that an adverse inference is an appropriate remedy, or that the
`proceeding should be terminated. Duodecad Supp. Resp. to WAG Opp. 1–5.
`As in reexamination practice, the Board generally accepts the
`petitioner’s identification of real party-in-interest. Office Patent Trial
`Practice Guide 77 Fed. Reg. 48,756, 48,759 (August 14, 2012) (citing In re
`Guan, Inter Partes Reexamination Proceeding Control No. 95/001,045).
`Although Petitioner’s identification of real parties-in-interest receives the
`benefit of a rebuttable presumption under Federal Rules of Evidence, that
`does not shift burden of persuasion, which remains on the party who had it
`originally. Fed. R. Evid. 301.
`The burden of rebutting the presumption that real parties-in-interest
`have been identified is on the patent owner to show that an un-named party
`is a real party-in-interest or privy. See 112 Cong. Rec. S1375 (daily ed.
`March 8, 2011)(Senator Kyl Remarks)(“The Office anticipates that patent
`owners will take the initiative in determining whether a petition[er] is the
`real party-in-interest or privy of a party that is barred from instituting a
`proceeding with respect to a patent.”).
`Petitioner has the burden of proving unpatentablity by a
`preponderance of evidence. 35 U.S.C. § 316(e). And Petitioner is
`statutorily required to identify all real parties-in-interest for us to consider
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`the Petition. 35 U.S.C. § 312(a)(2). When a patent owner provides
`sufficient rebuttal evidence that reasonably brings into question the accuracy
`of a petitioner’s identification of the real parties-in-interest, the burden
`remains with the petitioner to establish that it has complied with the
`statutory requirement to identify all the real parties-in-interest. Atlanta Gas
`Light Co.v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at
`8 (PTAB Jan. 6, 2015) (Paper 88); Corning Optical Communications RF,
`LLC v. PPC Broadband, Inc., Case IPR2014-00440, slip op. at 13–14
`(PTAB Aug. 18, 2015) (Paper 68). Thus, we disagree with Duodecad, as the
`question is not whether IML has violated any order or is exercising its
`choice (Duodecad Resp. Adv. J. 4–5), but whether the petitioner establishes
`that it has complied with the statutory requirement to identify all the real
`parties-in-interest. As discussed below, IML has failed to shoulder that
`burden.
`Patent Owner argues that IML offered to admit that IML and
`CoolVision are commonly owned and controlled, but retracted its offer when
`Patent Owner declined to forgo pursuit of future discovery on this issue in
`exchange for IML’s admission. WAG Opp. to Adv. J. 8 (citing Exhibit
`2010, Discovery Hr’g Tr. 33:1–12). Patent Owner further notes that IML’s
`counsel did not dispute IML’s and CoolVision’s common ownership or
`control at the discovery hearing. Id. (citing Discovery Hr’g. Tr. at 33:1–12).
`In addition, Patent Owner observes that in response to a direct question from
`the Panel, IML represented to the panel that WAG’s description of IML’s
`structure was generally correct. Id. (citing Discovery Hr’g. Tr. at 36:1–5.).
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`Patent Owner also argues that IML and CoolVision are proxies,
`noting that CoolVision transferred assets to IML, which then outsourced
`website operations to CoolVision, so that IML could collect the
`corresponding revenue. Id. at 8 (citing Discovery Hr’g. Tr. 35:13–36:5, Ex.
`2011). Patent Owner further cites IML’s admission that the individual who
`instructs IML’s counsel in this proceeding also works for CoolVision. Id. at
`10 (citing Ex. 2007, Discovery Hr’g. Tr. 33:13–34:10).
`IML and Duodecad have availed themselves of the procedures of this
`Board and have therefore consented fully to its jurisdiction. Our earlier
`orders make clear that Patent Owner established a threshold need for
`additional discovery on the issue of whether IML disclosed all real parties-
`in-interest to this proceeding when it filed its Petition prior to Duodecad’s
`petition and motion for joinder. See Paper 12 (discussing Patent Owner’s
`November 2016 discovery request). Patent Owner’s Motion for Additional
`Discovery contends that the redacted documents produced thus far, the
`stipulation filed as Exhibit 2007, and a retracted offer for an additional
`stipulation are insufficient to satisfy the requirements of identifying all
`parties that control and direct IML in this proceeding or have other
`important interests in its outcome. PO Mot. For Add. Disc. 2–4.
`We discussed the implications of publicly available information in our
`first order authorizing discovery, where we noted the publicly documented
`relationship between IML, CoolVision, and Muly Litvak. Paper 12, 4–9.
`Our orders authorizing further discovery, although not determinative,
`indicate that we agree with Patent Owner that significant issues exist as to
`whether IML identified all real parties-in-interest. Id. at 9. IML has failed
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`to clarify the relationship between itself and CoolVision and has failed to
`rebut the evidence and allegations made by Patent Owner. Rather than rebut
`Patent Owner’s evidence and allegations, IML has declined to answer
`further discovery and is willing to accept the consequence of an adverse
`judgment.
`Patent Owner argues that the consequence for IML failing to provide
`sufficient discovery should be termination of the proceeding and not simply
`IML abandoning the petition, leaving Duodecad as the sole Petitioner.
`WAG Opp. to Adv. J. 1–4. Patent Owner contends the evidence of record
`establishes that CoolVision is a real party-in-interest, or that an adverse
`inference regarding real party-in-interest or privity under 35 U.S.C. § 315(b)
`is warranted because IML has made it clear that it seeks withdrawal to avoid
`proceeding with discovery. WAG Opp. to Adv. J. 12–13.
`As a joined petitioner, Duodecad opposes termination, arguing that
`WAG fails to establish that CoolVision is either a privy or real party-in-
`interest. Duodecad Supp. Resp. to WAG Opp. 1–4. Duodecad argues that
`the evidence WAG asserts on common ownership, transfer or assets, or
`control via common counsel are not sufficient to establish that CoolVision is
`an unnamed real party-in-interest. Id. Furthermore, Duodecad argues that
`adverse inference is not appropriate because WAG has not shown additional
`discovery is necessary or pointed to any IML violation of an order from this
`Board. Id. at 4.
`Finally, Duodecad argues that Patent Owner has not cited any
`precedent that supports an action by the Board, i.e., termination under 37
`C.F.R. § 42.72, that would prevent Duodecad from participating as a
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`petitioner. Duodecad Resp. Adv. J. 11. Thus, Duodecad argues that
`termination is not warranted because IML has not violated any order of the
`Board and a lapse in compliance with 35 U.S.C. § 312(a) does not deprive
`the Board of jurisdiction over this proceeding. Id. at 10–12. Duodecad
`argues that as a petitioner, it may continue to a final determination on the
`merits after adverse judgment is entered against IML. Id. at 11–12.
`We are not persuaded by Duodecad’s arguments that assert WAG has
`failed to show that CoolVision is a real party-in-interest or privy or that IML
`has not violated an order of this Board. Neither of those points is dispositive
`here. In light of the facts and circumstances noted above, we are persuaded
`that Patent Owner has provided sufficient rebuttal evidence that brings into
`question the accuracy of Petitioner’s identification of the real parties-in-
`interest. In the absence of an adequate response to discovery or argument,
`IML has failed to bear its burden to establish that it has complied with the
`statutory requirement to identify all the real parties-in-interest. Atlanta Gas
`Light Case IPR2013-00453, Paper 88 at 8.
`Petitioner fails to adduce any facts or evidence to rebut Patent
`Owner’s evidence that Petitioner failed to identify all the real parties-in-
`interest. Indeed, Petitioner acknowledged and acquiesced to Patent Owner’s
`facts as accurate. See Discovery Hr’g. Tr. 33:1–34:10 (common counsel);
`35:13–36:5 (stating that Patent Owner was correct as to general structure of
`the operation). Duodecad’s argument that 35 U.S.C. § 312(a) is not a
`jurisdictional requirement does not negate IML’s failure to persuade us that
`IML complied with the statutory requirement to identify the real parties-in-
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`interest. We are not authorized to consider a petition where all of the real
`parties-in-interest are not identified.
`In view of the foregoing facts raised in the record by Patent Owner
`and Petitioner’s abandonment of the proceeding rather than respond to
`Patent Owner’s evidence and discovery, it is Petitioner’s failure to carry the
`burden to persuade us that it complied with the statutory requirement to
`name the real parties-in-interest that leads us to terminate the instant
`proceeding. See Atlanta Gas Light Case IPR2013-00453, Paper 88 at 8; 37
`C.F.R. 42.72.9 Thus, because IML failed to meet the requirements for a
`complete petition this proceeding is terminated, the Decision on Institution is
`vacated, and IML’s Petition is dismissed. Accordingly, IML’s Motion for
`Adverse Judgment is moot and is hereby dismissed.
`Having vacated the decision instituting this proceeding, we
`necessarily also vacate the grant of Duodecad’s Motion for Joinder in
`IPR2017-01179. Our order granting Duodecad’s petition and motion for
`joinder states that “IPR2017-01179 is terminated under 37 C.F.R. § 42.72.”
`Paper 25, 6. The petition in IPR2016-01658 that supported Duodecad’s
`Petition and joinder motion, however, has been terminated and vacated.
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`9 See also Amazon.com, Inc. et al v. Appistry, Inc., IPR2015-01480 slip op.
`6–7 (PTAB July 13, 2015) (Paper 18) (finding that Petitioner did not
`comply with 35 U.S.C. § 312(a) as the “burden remains with Petitioner to
`establish that it has complied with the statutory requirement to identify all
`real parties-in-interest;” “Petitioner was given the opportunity to provide
`additional evidence to rebut Patent Owner’s evidence and meet its burden,
`but Petitioner chose not to provide any such evidence.”).
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`Accordingly, our Decision instituting inter partes review in IPR2017-01179
`and granting joinder with IPR2016-01658 is vacated.
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`V. MOTIONS TO SEAL
`On May 5, 2017, IML filed an unopposed motion for a protective
`order. Paper 13. A copy of the agreed-upon protective order was included as
`Appendix A to Petitioner’s Motion. Id.
`On June 12, 2017, Patent Owner filed a Motion to Seal (Paper 20) its
`Request for Additional Discovery (Paper 21), Exhibit 2006 (Transcript of a
`teleconference with the Board of June 5, 2017), Exhibit 2007 (Stipulations
`of Fact), and 2009 Proposed Interrogatories and Requests for Admission).
`On June 19, 2017, Petitioner filed its Brief in Opposition to Patent Owner’s
`Motion for Discovery (Paper 22) as accessible to Board and Parties only, but
`did not file a corresponding Motion to Seal.
`On January 5, 2018, Patent Owner filed as Paper 38 a Motion For
`Entry of The Modified Protective Order and To Seal the Opposition to
`Petitioner IML SLU’s Request For Adverse Judgment filed as Paper 37.10
`Patent Owner’s Opposition to IML’s Motion of Adverse Judgment
`references the following exhibits filed as accessible to the Board and parties
`only: Exhibit 2010 (Excerpt of November 30, 2016 Email from D.
`
`
`10 IML’s May 5, 2017 Motion for Protective Order does not state that it
`differs from the Board’s default protective order nor was the Motion
`accompanied by a marked up version of the Board’s default protective order
`and it is unclear what, if anything, has been “modified” in Patent Owner’s
`filing.
`
`
`
`
`
`15
`
`
`
`IPR2016-01658
`Patent 8,364,839 B2
`
`Yohannan), Ex. 2011 (Corporate Transactions documents produced by
`IML), and Ex. 2013 (November 29, 2017 Email to Board from S. Yovits).
`On February 2, 2018, Duodecad filed a motion to seal Paper 43 filed
`as Duodecad’s Supplemental Response to Patent Owner’s Opposition (Paper
`44).
`
`In view of the parties’ agreement on the protective order and Patent
`Owner’s designation of the subject matter as of business significance to
`IML, we enter the protective order and grant the motions to seal.
`
`VI. CONCLUSION
`IML bears the burden of proof on the issue of having named all real
`parties-in-interest. For purposes of this proceeding only, IML has failed to
`carry that burden. Therefore, the proceeding is terminated and our Decision
`on Institution is vacated.
`
`ORDER
`In consideration of the above, it is
`ORDERED that the instant proceeding is terminated;
`FURTHER ORDERED that the Decision on Institution in the instant
`proceeding is vacated;
`FURTHER ORDERED that IML’s Petition is dismissed;
`FURTHER ORDERED that our Decision instituting inter partes
`review in IPR2017-01179 and granting joinder with this instant proceeding
`is vacated;
`FURTHER ORDERED that IML’s Motion for Adverse Judgment is
`dismissed; and
`
`
`
`
`16
`
`
`
`IPR2016-01658
`Patent 8,364,839 B2
`
`
`FURTHER ORDERED that the unopposed Protective Order is
`entered and Patent Owner’s Motions to Seal and Duodecad’s Motion to Seal
`are granted.
`
`
`
`
`17
`
`
`
`IPR2016-01658
`Patent 8,364,839 B2
`
`PETITIONER:
`
`Steven Yovits
`KELLEY DRYE & WARREN LLP
`syovits@kelleydrye.com
`
`
`
`PATENT OWNER:
`
`Ronald Abramson
`Ari J. Jaffess
`M. Michael Lewis
`LEWIS BAACH KAUFMANN MIDDLEMISS PLLC
`ronald.abramson@lbkmlaw.com
`ari.jaffess@lbkmlaw.com
`michael.lewis@lbkmlaw.com
`
`Ernest Buff
`ERNEST D. BUFF & ASSOCIATES, LLC
`ebuff@edbuff.com
`
`
`
`
`18
`
`
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