`Tel: 571-272-7822
`
`
`
`
`
`Paper 68
`Entered: October 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EBAY INC., ALIBABA.COM HONG KONG LTD., AND
`BOOKING.COM B.V.,
`
`Petitioner,
`
`v.
`
`GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD.,
`
`Patent Owner.
`____________
`
`Case IPR2016-01828
`Patent 6,690,400 B1
`____________
`
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
` DECISION
`Granting Joint Motion to Withdraw Ground 2
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2016-01828
`Patent 6,690,400 B1
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.71 and the Board’s July 17, 2018, email
`authorizing the filing of a Joint Motion (Paper 67), Petitioner eBay Inc.,
`Alibaba.com Hong Kong Ltd., Booking.com B.V. (collectively
`“Petitioner”), and Patent Owner, Global Equity Management (SA) Pty. Ltd.,
`jointly request that the Board withdraw Ground 2 of the Petition (Paper 1).
`Paper 67, 2–3. For the reasons explained below, the Joint Motion is granted.
`BACKGROUND
`Petitioner filed the Petition on September 22, 2016, requesting review
`of claims 1, 2, 16 and 28 of U.S. Patent No. 6,690,400 in view of
`PartitionMagic 3.0 User Guide (Ground 1) and PartitionMagic 4.0 User
`Guide (Ground 2). Paper 1, 18. On April 21, 2017, we instituted a review
`of claims 1 and 2 based on Ground 1, but did not institute as to claims 16
`and 28, or as to Ground 2. Paper 14. A hearing was held on January 22,
`2018, a transcript of which has been made part of the record. Paper 60. On
`April 17, 2018, we issued a Final Written Decision holding claims 1 and 2
`unpatentable based on Ground 1. Paper 64.
`On April 24, 2018, the Supreme Court issued its decision in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”).
`On May 17, 2018, Patent Owner filed a Motion for Rehearing arguing
`that denial of institution as to claims 16 and 28 under Ground 1 and as to
`Ground 2 was improper under SAS, and asking us to set a schedule to deal
`with the previously non-instituted claims and ground. Paper 65. That
`Motion is still pending.
`
`ANALYSIS
`Pursuant to the Board’s April 26, 2018, “Guidance on the impact of
`SAS on AIA Trial Proceedings,” the parties have met, conferred, and agreed
`
`2
`
`
`
`
`
`
`
`IPR2016-01828
`Patent 6,690,400 B1
`
`(i) to withdraw Ground 2 from the Petition, based on Petitioner’s agreement
`that the prior art publication supporting this Ground is art that was “raised or
`reasonably could have been raised” during the instant proceeding for
`purposes of 35 U.S.C. §315(e); and (ii) that Patent Owner’s pending Motion
`for Rehearing (Paper 65) should proceed in the ordinary course as to Ground
`1 for claims 16 and 28. Paper 67, 2–3.
`In light of the Supreme Court’s SAS decision and in an effort to
`promote the Board’s mandate of providing a “just, speedy, and inexpensive”
`resolution to the proceeding, good cause having been shown, the parties
`Joint Motion to withdraw Ground 2 of the Petition is granted.
`
`Accordingly, for the reasons given, it is
`ORDERED that Ground 2 of the Petition is withdrawn; and,
`FURTHER ORDERED that Patent Owner’s pending Motion for
`Rehearing (Paper 65) shall proceed in the ordinary course as to Ground 1 for
`claims 16 and 28.
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`IPR2016-01828
`Patent 6,690,400 B1
`
`PETITIONER:
`
`Benjamin Weed
`Jackson Ho
`K&L GATES LLP
`benjamin.weed.ptab@klgates.com
`jackson.ho@klgates.com
`
`Todd Siegel
`Andrew Mason
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`
`Brett Watkins
`Lance Yang
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`brettwatkins@quinnemanuel.com
`lanceyang@quinnemanuel.com
`
`
`PATENT OWNER:
`
`Lissi Mojica
`Mark Cantor
`Sangeeta Shah
`Richard J. Cantor
`Brian Doughty
`BROOKS KUSHMAN P.C.
`lmojica@brookskushman.com
`mcantor@brookskushman.com
`sshah@brookskushman.com
`rjcantor@brookskushman.com
`bdoughty@brookskushman.com
`
`
`4
`
`
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