`571-272-7822
`
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`
`
`
`
` Paper No. 9
`
`
` Entered: October 31, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC SURF DESIGNS, INC.,
`Petitioner,
`
`v.
`
`Patent Owner of U.S. Patent 6,491,589.
`____________
`
`Case IPR2016-01674
`Patent 6,491,589
`____________
`
`Before PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`
`
`Counsel for FlowRider Surf, LTD., contacted the Board via email on
`September 26, 2016. Ex. 3001. Counsel requests that we expunge Papers 4
`and 5. Counsel filed two sets of a Power of Attorney pursuant to 37 C.F.R.
`§ 42.10(b) and a Mandatory Notice pursuant to 37 C.F.R. § 42.8. Papers 4
`and 5 are the first set, and name “Surf Waves, Ltd.” as Patent Owner.
`Papers 6 and 8 are the second set, which state that “Surf Park PTE. LTD.” is
`a Patent Owner. In the email, counsel for FlowRider Surf asserts that “the
`de facto Patent Owner is Whitewater West Industries, Ltd. . . . through its
`wholly-owned subsidiary, FLOWRIDER SURF, LTD.”
`We generally do not grant relief other than that requested in the form
`of a motion, which requires authorization before filing. 37 C.F.R. § 42.20.
`FlowRider Surf did not request such authorization. Even treating the email
`from counsel as a request for authorization to file a motion, we deny the
`request because counsel has provided no basis to justify expunging the
`record. We note that a party is obligated to file updated mandatory notices
`whenever information changes. 37 C.F.R. § 42.8(a)(3).
`We further note that the governing statutes and our rules provide for
`filings only on behalf of the Patent Owner. See 35 U.S.C. §§ 313, 316;
`37 C.F.R. §§ 42.8, 42.107, 42.120. In this case, it does not appear that the
`patent owner of record, Surf Park PTE. LTD., has filed a Power of Attorney
`or Mandatory Notice. According to counsel’s email, FlowRider Surf, Ltd.,
`is entitled to act at the Patent Owner. For us to proceed on such a basis,
`FlowRider Surf must file evidence of the license agreement granting it all
`substantial rights to U.S. Patent No. 6,491,589. Such evidence would
`support FlowRider Surf acting as patent owner. See Motorola Mobility LLC
`v. Patent of Michael Arnouse, No. IPR2013-00010 (Paper 27), 2013 WL
`
`2
`
`
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`
`5970127 at *3 (PTAB April 5, 2013) (applying Federal Circuit standing
`analysis to determine who “has the right to participate in proceedings at the
`Office”); Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir.
`2000) (holding that, with a transfer of “all substantial rights under the patent,
`the assignee may be deemed the effective ‘patentee’ under 35 U.S.C.
`§ 281”); see also NXP Semiconductors USA Inc. v. Inside Secure, No.
`IPR2016-00684 (Paper 10), 2016 WL 5404197, at n.1 (PTAB Sept. 8, 2016)
`(treating the exclusive licensee as patent owner and noting that the license
`had provided evidence supporting that it held all substantial rights in the
`patent). If FlowRider Surf does not file evidence supporting that it holds all
`substantial rights to the ’589 patent, the true patent owner must file the
`required papers to represent its interest in in this proceeding (a Power of
`Attorney and Mandatory Notice). The true patent owner of the ’589 patent
`is required to file its Mandatory Notices under 37 C.F.R. § 42.8 within 21
`days of the service date of the petition.
`If additional clarification is needed, the parties should request a
`teleconference with the Board.
`Accordingly, it is:
`ORDERED that the request for authorization to file a motion is
`denied.
`
`
`
`3
`
`
`
`
`
`Case IPR2016-01674
`Patent 6,491,589 B1
`
`PETITIONER:
`
`Charanjit Brahma
`TROUTMAN SANDERS LLP
`charanjit.brahma@troutmansanders.com
`
`PATENT OWNER:
`
`Barry Schindler
`Lennie Bersh
`Erik Squier Squier
`GREENBERG TRAURIG, LLP
`schindlerb@gtlaw.com
`bershl@gtlaw.com
`squiere@gtlaw.com
`
`
`
`
`
`4
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