Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 42
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`STI-ACQ, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00829 (Patent 9,083,997 B2)
`Case IPR2017-00830 (Patent 9,083,997 B2)
`Case IPR2017-01131 (Patent 8,464,304 B2)
`Case IPR2017-01133 (Patent 8,601,506 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`
`
`571-272-7822
`
`
` Paper No. 42
`Entered: June 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TWITTER, INC.,
`Petitioner,
`
`v.
`
`STI-ACQ, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00829 (Patent 9,083,997 B2)
`Case IPR2017-00830 (Patent 9,083,997 B2)
`Case IPR2017-01131 (Patent 8,464,304 B2)
`Case IPR2017-01133 (Patent 8,601,506 B2)1
`____________
`
`
`Before SALLY C. MEDLEY, CHARLES J. BOUDREAU, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`
`1 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`
`On November 30, 2017, after institution of these proceedings but
`before a Patent Owner Response had been filed, YouToo Technologies LLC
`(“YouToo”), the Patent Owner at that time, filed for bankruptcy. Ex. 2003.2
`Prior to and during the bankruptcy, the panel extended the schedule in these
`proceedings several times. In particular, on November 8, 2017, the panel
`extended Due Dates 1 and 2 (originally set for November 13, 2017 and
`February 12, 2018 respectively) at Patent Owner’s request and to allow
`Patent Owner time to retain new lead counsel. See Paper 17. Following the
`bankruptcy filing, Patent Owner moved to stay these proceedings, and
`during the pendency of the bankruptcy, we extended Due Dates 1 and 2 on
`December 7, 2017. Paper 20. We further extended Due Date 1 on
`December 28, 2017, January 19, 2018, February 26, 2018, and noted that
`other due dates following Due Date 1 would be reset in a future order.
`Papers 23, 24, 31.
`During the bankruptcy, the bankruptcy court approved an agreed order
`to sell certain of YouToo’s property, including the patents challenged in
`these proceedings. Ex. 1029; Ex. 1032. On May 1, 2018, the bankruptcy
`trustee filed a report of sale indicating the challenged patents have been sold
`to STI-ACQ LLC (“STI-ACQ” or “Patent Owner”). IPR2017-001131, Ex.
`1032. Mandatory notices were later filed indicating that STI-ACQ is now
`the Patent Owner and real party in interest in these proceedings. IPR2017-
`00829, Paper 37; IPR2017-00830, Paper 38; IPR2017-01131, Paper 37;
`
`
`2 For expediency and unless otherwise noted, we refer to the papers and
`exhibits in IPR2017-00829.
`
`2
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`IPR2017-01133, Paper 34. The panel held a conference call with the parties
`on May 3, 2018, and determined the appropriate schedule to set in these
`proceedings, recognizing that both parties’ proposed schedules as well as the
`one ultimately set in our Order would require the statutory deadline to be
`extended for good cause in these proceedings (the one-year period normally
`available to issue a Final Written Decision expires on August 10, 2018 for
`IPR2017-00829 and IPR2017-00830 and on October 2, 2018 for IPR2017-
`01131 and IPR2017-01133). Paper 38. In that Order, we set Due Date 1 for
`June 29, 2018. Id. at 5. In other words, because of the unique circumstances
`of this case, we have extended Due Date 1 from November 13, 2017 to June
`29, 2018. Papers 11, 38. On May 18, 2018, Patent Owner filed updated
`mandatory notices and a power of attorney, indicating that Patent Owner has
`retained new lead counsel. Papers 39, 40.
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director may, for good cause shown, extend the 1-year
`period by not more than 6 months . . . .” The Director has delegated the
`authority to extend the one-year period to the Chief Administrative Patent
`Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c)
`provides:
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be extended by up to six
`months for good cause by the Chief Administrative Patent Judge
`. . . .
`
`3
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`
`In accordance with 37 C.F.R. § 42.100(c), the Chief Judge has
`determined that good cause exists to extend the one-year period for issuing a
`Final Written Decision here. IPR2017-00829, Paper 41; IPR2017-00830,
`Paper 42; IPR2017-01131, Paper 41; IPR2017-01133, Paper 38; 37 C.F.R.
`§ 42.100(c). Accordingly, the time to administer the present proceeding is
`extended by up to six months.
`It is
`ORDERED that good cause exists to extend the time of pendency in
`this proceeding; and
`FURTHER ORDERED that this proceeding is extended by up to six
`months.
`
`
`
`
`
`
`4
`
`
`
`IPR2017-00829 (Patent 9,083,997 B2)
`IPR2017-00830 (Patent 9,083,997 B2)
`IPR2017-01131 (Patent 8,464,304 B2)
`IPR2017-01133 (Patent 8,601,506 B2)
`
`PETITIONER:
`
`IPR2017-00829, -00830
`David McCombs
`Gregory Huh
`Theodore Foster
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`gregory.huh.ipr@haynesboone.com
`ipr.theo.foster@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`
`IPR2017-01131, -01133
`Todd Siegel
`Andrew Mason
`Robert T. Cruzen
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`rob.cruzen@klarquist.com
`
`
`PATENT OWNER:
`
`Scott McKeown
`ROPES & GRAY LLP
`scott.mckeown@ropes.gray.com
`Spencer C. Patterson
`GRABLE MARTIN FULTON PLLC
`patterson@gchub.com
`Stephen L. Levine
`CARRINGTON, COLEMAN, SLOMAN & BLUMENTHAL, L.L.P.
`slevine@ccsb.com
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
