`571-272-7822
`
`Paper 9
`Entered: June 13, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KYOCERA INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`BLUE SPIKE, LLC and WISTARIA TRADING LTD.,
`Patent Owners.
`____________
`
`Case IPR2017-01061 (Patent 5,745,569)
`Case IPR2017-01109 (Patent 8,930,719 B2)1
`____________
`
`Before DEBRA K. STEPHENS, PATRICK R. SCANLON, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`DECISION
`Granting Petitioner’s Motion to Dismiss
`Dismissing Patent Owner’s Motion for District Court-Type
`Claim Construction
`37 C.F.R. §§ 42.5(a), 42.20, 42.71(a), 42.100(b)
`
`1 This Decision addresses issues that are identical in the two cases.
`Therefore, we exercise our discretion to issue a single decision to be filed in
`each case. The parties are not authorized to use a similar caption.
`
`
`
`IPR2017-01061 (Patent 5,745,569)
`IPR2017-01109 (Patent 8,930,719 B2)
`
`
`
`I. MOTIONS TO DISMISS
`
`In each of the instant proceedings, Petitioner filed an Unopposed
`
`Motion to Dismiss (Paper 10)2 on May 5, 2017. At the time of the filing of
`
`these Motions, the Board had not authorized such filings. 37 C.F.R.
`
`§ 42.20(b) provides: “[a] motion will not be entered without Board
`
`authorization.” In these cases, Petitioner had sought authorization to file its
`
`Motions via an email to the Board on May 3, 2017, but was informed at that
`
`time that these proceedings had not yet been empaneled and its requests for
`
`authorization would be presented to the panel upon empanelment. Paper 10,
`
`1. Nevertheless, Petitioner filed its motions before empanelment “to relieve
`
`the need for appointment of any Panel, and [for] the attendant conservation
`
`of resources.” Id.
`
`The Board generally does not act on motions to dismiss prior to a
`
`panel being empaneled. Thus, despite its admirable intentions, Petitioner
`
`should have awaited the Board’s authorization before filing its Motions. In
`
`view of the present circumstances, however, we retroactively authorize filing
`
`of Petitioner’s Motions.
`
`Each of these proceedings is still in a preliminary stage. Patent
`
`Owners have not filed preliminary responses, and we have not considered
`
`the merits of the Petitions. Furthermore, according to Petitioner, the parties
`
`met and conferred, and Patent Owners do not oppose the Motions. Id.
`
`Petitioner also asserts that dismissal of the Petitions “will preserve the
`
`
`
` 2
`
` With respect to the papers discussed herein, the parties filed substantially
`similar papers in each proceeding. For convenience, the paper numbers
`cited herein refer to IPR2017-01061.
`
`2
`
`
`
`
`
`IPR2017-01061 (Patent 5,745,569)
`IPR2017-01109 (Patent 8,930,719 B2)
`
`
`
`Board’s resources and the parties’ resources while also epitomizing the
`
`Patent Office’s policy of ‘secur[ing] the just, speedy, and inexpensive
`
`resolution’” of the proceedings in accordance with 37 C.F.R. § 42.1(b). Id.
`
`at 2. Under these circumstances, we determine that it is appropriate to
`
`dismiss the petitions. See 37 C.F.R. §§ 42.5(a), 42.71(a). This Decision
`
`does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`II. MOTIONS FOR DISTRICT COURT-TYPE
`CLAIM CONSTRUCTION
`
`Patent Owner, in each respective proceeding, and without prior
`
`authorization from the Board, filed a Motion for District Court-Type Claim
`
`Construction (Paper 7). Petitioner filed a Response to Patent Owner’s
`
`Motion (Paper 9) in each proceeding. Although Patent Owners are reminded
`
`that they should have sought the Board’s authorization before filing, we
`
`retroactively authorize filing of Patent Owners’ Motions.
`
`Our decision to grant Petitioner’s Motions to Dismiss renders Patent
`
`Owners’ Motions moot. Accordingly Patent Owners’ Motions are
`
`dismissed.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`ORDERED that Petitioner’s Motion to Dismiss in each of the instant
`
`proceedings is granted;
`
`FURTHER ORDERED that the Petition in each of the instant
`
`proceedings is dismissed; and
`
`3
`
`
`
`
`
`IPR2017-01061 (Patent 5,745,569)
`IPR2017-01109 (Patent 8,930,719 B2)
`
`
`
`FURTHER ORDERED that Patent Owner’s Motion for District
`
`Court-Type Claim Construction in each of the instant proceedings is
`
`dismissed.
`
`
`
`4
`
`
`
`
`
`IPR2017-01061 (Patent 5,745,569)
`IPR2017-01109 (Patent 8,930,719 B2)
`
`
`
`PETITIONER:
`
`Nicola Pisano
`npisano@foley.com
`
`Scott Kaspar
`skaspar@foley.com
`
`PATENT OWNER:
`
`Richard Neifeld
`rneifeld@neifeld.com
`
`Bruce Margulies
`bmargulies@neifeld.com
`
`5
`
`
`
`
`
`
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