Trials@uspto.gov Paper No. 71
`571-272-7822 Entered: December 6, 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)
`Case IPR2016-01829 (Patent 7,356,677 B1)1
`____________
`
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`TROCK, Administrative Patent Judge
`
`DECISION
`Patent Owner’s Request for Extension of Time to Appeal
`37 C.F.R. § 90.3 (c)(1)(i)
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Decision and Order applies to the two listed cases. The parties are not
`authorized to use this heading style.
`
`
`571-272-7822 Entered: December 6, 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)
`Case IPR2016-01829 (Patent 7,356,677 B1)1
`____________
`
`
`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`TROCK, Administrative Patent Judge
`
`DECISION
`Patent Owner’s Request for Extension of Time to Appeal
`37 C.F.R. § 90.3 (c)(1)(i)
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Decision and Order applies to the two listed cases. The parties are not
`authorized to use this heading style.
`
`
`
`IPR2016-01828; Patent 6,690,400
`IPR2016-01829; Patent 7,356,677
`
`
`Request to File Renewed Motions to Terminate
`
`On September 21, 2018, we held a conference call with counsel for
`
`the parties, wherein Patent Owner’s counsel requested permission to file
`
`renewed motions to terminate these proceedings based on the recent Federal
`
`Circuit opinion in Applications in Internet Time, LLC v. RPX Corp., 897
`
`F.3d 1336 (Fed. Cir. 2018). For the reasons stated below, we deny Patent
`
`Owner’s request.
`
`Earlier in these proceedings, on September 18, 2017, Patent Owner
`
`filed motions to terminate, arguing,
`
`[o]n July 22, 2016, Amazon filed an action in the Eastern
`District of VA seeking a declaratory judgment of invalidity
`of U.S. Patent Numbers 6,690,400 (“the ‘400 patent”) and
`7,356,677 (“the ‘677 patent”). . . . Amazon filed the Virginia
`action, at least in part, on behalf of Expedia, and TripAdvisor
`LLC and even declared itself to be the “real part[y] in
`interest” with regard to lawsuits filed in Texas against the
`Amazon IPR customers for infringement of the ‘400 and
`‘677 patents.
`
`Paper 31, 1 (IPR2016-01828); Paper 30, 1 (IPR2016-01829).
`
`Pursuant to 35 U.S.C. § 315(a)(1) “[a]n inter partes review may not
`
`be instituted if, before the date on which the petition for such a review is
`
`filed, the petitioner or real party in interest filed a civil action challenging
`
`the validity of a claim of the patent.” (emphasis added). On January 18,
`
`2018, we denied Patent Owner’s motions to terminate, stating,
`
`Patent Owner’s evidence does not show that Expedia,
`Booking.com, or TripAdvisor previously ‘filed a civil action
`challenging the validity of a claim of the patent.’ Under the
`unambiguous language of the statute, being an RPI in the
`Virginia action, as Patent Owner asserts, does not trigger the
`preclusive effect of 35 U.S.C. § 315(a)(1).
`
`
`
`IPR2016-01828; Patent 6,690,400
`IPR2016-01829; Patent 7,356,677
`
`Paper 58, 5–6 (IPR2016-01828); Paper 57, 5–6 (IPR2016-01829). 2
`
`
`
`During the conference call, counsel for Patent Owner was unable to
`
`explain how the evidence of record, even after taking into consideration the
`
`Federal Circuit’s opinion in Applications in Internet Time, established that
`
`Expedia, Booking.com, or TripAdvisor previously “filed a civil action
`
`challenging the validity of a claim of the patent,” as required to invoke 35
`
`U.S.C. § 315(a)(1). Without an explanation as to how the evidence would
`
`establish that Expedia, Booking.com, or TripAdvisor filed the civil action in
`
`Virginia, Patent Owner’s renewed motion to terminate would be futile.
`
`Accordingly, we decline to grant Patent Owner’s request to file renewed
`
`motions to terminate these proceedings.
`
`Request for Extension of Time to Appeal
`
`
`
`We issued our Final Decisions in these proceedings on April 17, 2018
`
`(Paper 64, IPR2016-01828), and April 18, 2018 (Paper 63, IPR2016-01829).
`
`We issued our decisions on Patent Owner’s Request for Rehearing on
`
`October 12, 2018 (Paper 69, IPR2016-01828), and October 15, 2018 (Paper
`
`66, IPR2016-01829).
`
`On December 4, 2018, Patent Owner filed, without authorization, a
`
`Request for an Extension of Time to Appeal under 37 C.F.R. § 90.3 (c)(1)(i).
`
`
`2 As the party seeking relief, Patent Owner bears the burden of persuasion on
`the motions to terminate. Petitioner, however, bears the burden of
`persuasion on the real party in interest issue. Petitioner met its burden on the
`real party in interest issue, but Patent Owner did not meet its burden on the
`motions to terminate. See Paper 58, 5–6 (IPR2016-01828); Paper 57, 5–6
`(IPR2016-01829).
`
`
`
`IPR2016-01828; Patent 6,690,400
`IPR2016-01829; Patent 7,356,677
`
`Paper 70 (IPR2016-01828); Paper 67 (IPR2016-01829).3 Patent Owner
`
`requests an additional 30 days to appeal our Final Decisions to the Federal
`
`Circuit for two reasons. First, Patent Owner argues, if an appeal of the
`
`Final Decisions is filed, it is unclear the Board would retain jurisdiction to
`
`rule on the pending request for authorization to file renewed motions to
`
`terminate. Paper 70, 2; Paper 67, 2. Second, Patent Owner argues, if a
`
`motion to terminate the proceedings was authorized and granted, appeal
`
`would be unnecessary. Id. Because we deny instanter Patent Owner’s
`
`request to file renewed motions to terminate these proceedings, Patent
`
`Owner’s reasons for requesting additional time to appeal our Final Decisions
`
`to the Federal Circuit are moot. Patent Owner’s Requests for an Extension
`
`of Time to Appeal are, therefore, denied as moot.
`
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that Patent Owner’s request for authorization to file
`
`renewed motions to terminate is denied; and
`
`FURTHER ORDERED that Patent Owner’s Requests for an
`
`Extension of Time to Appeal (IPR2016-01828, Paper 70; IPR2016-01829,
`
`Paper 67) are denied as moot.
`
`
`
`
`3 Patent Owner’s requests were not pre-authorized and, therefore, should be
`expunged as papers filed without authorization. Nevertheless, we address
`the merits.
`
`
`
`IPR2016-01828; Patent 6,690,400
`IPR2016-01829; Patent 7,356,677
`
`PETITIONERS:
`
`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:
`
`Mark Cantor
`Richard J. Cantor
`Isaac T. Slutsky
`BROOKS KUSHMAN P.C.
`mcantor@brookskushman.com
`rjcantor@brookskushman.com
`islutsky@brookskushman.com
`
`
`
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