Trials@uspto.gov
`571-272-7822
`
`
`PUBLIC VERSION
`
`
`
`Paper 58
`Entered: June 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`_______________
`
`IPR2017-01200
`Patent 8,718,185 B2
`_______________
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`
`PUBLIC VERSION
`
`
`
`Paper 58
`Entered: June 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. and TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`_______________
`
`IPR2017-01200
`Patent 8,718,185 B2
`_______________
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`
`I.
`INTRODUCTION
` Background and Summary
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims
`1, 6, 9, 10, 15, 18, 24, and 25 (“the challenged claims”) of U.S. Patent No.
`8,718,185 B2 (Ex. 1001, “the ’185 patent”). Regents of the University of
`Minnesota (“Patent Owner”) filed a Motion to Dismiss on the basis that it is
`entitled to sovereign immunity as an arm of the State of Minnesota. Paper
`10. We denied Patent Owner’s Motion to Dismiss. Paper 16. Patent Owner
`appealed to the Court of Appeals for the Federal Circuit, and we stayed this
`proceeding pending the outcome of that appeal. Papers 23, 24. The Federal
`Circuit affirmed our Decision denying the Motion to Dismiss. Paper 25.
`Patent Owner then filed a Preliminary Response (Paper 31, “Prelim. Resp.”),
`and, with our authorization, Petitioner filed a Reply (Paper 48, “Reply”), and
`Patent Owner filed a Sur-reply (Paper 43, “Sur-reply”).1
`An inter partes review “may not be instituted if the petition requesting
`the proceeding is filed more than 1 year after the date on which the
`petitioner, real party in interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). For the
`reasons discussed below, the evidence of record shows that the Petition was
`filed more than one year after the date on which a privy of Petitioner was
`served with a complaint alleging infringement of the ’185 patent. Therefore,
`the Petition is denied, and no trial is instituted.
`
`1 We cite to non-public versions of the Preliminary Response and Sur-reply,
`but Patent Owner also filed public versions. Papers 51, 53.
`
`2
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`
` Related Matters
`The parties indicate that the ’185 patent is involved in the following
`district court cases: 1) Regents of the University of Minnesota v. AT&T
`Mobility LLC, No. 0-14- cv-04666 (D. Minn.); 2) Regents of the University
`of Minnesota v. Sprint Solutions, Inc., No. 0-14-cv-04669 (D. Minn.);
`3) Regents of the University of Minnesota v. T-Mobile USA, Inc., No. 0-14-
`cv-04671 (D. Minn.); and 4) Regents of the University of Minnesota v.
`Cellco Partnership, No. 0-14-cv-04672 (D. Minn.). Pet. 3; Paper 5, 1. We
`refer to these district court cases collectively as the District Court Litigation,
`and we refer to the defendants in those cases collectively as the District
`Court Defendants.
`In addition to the Petition in the present proceeding, Petitioner also
`filed petitions for inter partes review of the other patents asserted in the
`District Court Litigation. IPR2017-01186, Paper 1; IPR2017-01197, Paper
`1; IPR2017-01213, Paper 1; IPR2017-01214, Paper 2; IPR2017-01219,
`Paper 1.
`
`II. ANALYSIS
`Patent Owner served the District Court Defendants with complaints
`alleging infringement of the ’185 patent on November 6, 2014. Ex. 2005, 1;
`Ex. 2007, 1; Ex. 2009, 1; Ex 2011, 1. Petitioner filed the Petition in this
`case more than one year later on March 30, 2017. Paper 3, 1. Patent Owner
`asserts that the Petition is barred under § 315(b) because the District Court
`
`3
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`Defendants are privies of Petitioner.2 Prelim. Resp. 14–29. Petitioner
`contends that it is not in privity with the District Court Defendants, and,
`thus, that the Petition is timely. Pet. 5–8; Reply 4–12. For the reasons
`discussed below, we agree with Patent Owner that the Petition is barred
`under § 315(b).
` Legal Principles
`As stated above, § 315(b) provides that an inter partes review “may
`not be instituted if the petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in interest, or privy of
`the petitioner is served with a complaint alleging infringement of the
`patent.” Whether a petitioner is in privity with another party “is a highly
`fact-dependent question.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,759 (Aug. 14, 2012) (“TPG”). Our “analysis seeks to determine
`whether the relationship between the purported ‘privy’ and the relevant other
`party is sufficiently close such that both should be bound by the trial
`outcome and related estoppels.” Id.
`In Taylor v. Sturgell, 553 U.S. 880, 893 (2008), the Supreme Court
`explained that “the rule against nonparty preclusion is subject to exceptions”
`that “can be grouped into six categories.” Specifically, nonparty preclusion
`may be found 1) when “[a] person . . . agrees to be bound by the
`determination of issues in an action between others”; 2) “based on a variety
`
`
`2 Patent Owner asserts that the District Court Defendants also are real parties
`in interest. Prelim. Resp. 29–31. Because we determine that the District
`Court Defendants are privies of Petitioner, we need not decide whether they
`also are real parties in interest.
`
`4
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`of pre-existing ‘substantive legal relationship[s]’ between the person to be
`bound and a party to the judgment”; 3) when “a nonparty . . . was
`‘adequately represented by someone with the same interests who [wa]s a
`party’”; 4) when “a nonparty . . . ‘assume[d] control’ over the litigation in
`which [the] judgment was rendered”; 5) when a nonparty acts as “a proxy”
`to relitigate for a party; and 6) when “a special statutory scheme may
`‘expressly foreclos[e] successive litigation by nonlitigants.’” Id. at 893−95.
`The Supreme Court noted, though, that this list of six categories is just “a
`framework,” not “a definitive taxonomy.” Id. at 893 n.6.
` Relevant Facts
`Petitioner supplies wireless broadband base stations to the District
`Court Defendants. Ex. 2026, 1; Ex. 2027, 1; Ex. 2028, 1; Ex. 2029, 2.
`Petitioner acknowledges that it provides its base stations to the District Court
`Defendants pursuant to supply agreements that “contain[] detailed
`indemnification provisions.” Ex. 2031, 1; Ex. 2032, 1; Ex. 2033, 1; Ex.
`2034, 1; see Ex. 2012, 9, 16; Ex. 2013, 14–15; Ex. 2014, 11; Ex. 2015, 14–
`15. 3 Specifically, according to Petitioner, the supply agreements require it
`to indemnify the District Court Defendants for “patent infringement claims
`arising out of” the District Court Defendants’ “use of” Petitioner’s base
`stations. Ex. 2031, 1; Ex. 2032, 1; Ex. 2033, 1; Ex. 2034, 1; see Ex. 2012,
`16; Ex. 2013, 14–15; Ex. 2014, 11; Ex. 2015, 14–15.
`
`
`3 Patent Owner filed non-public and public versions of Exhibits 2012–2015
`under the same exhibit numbers but incorrectly labeled the public version of
`Exhibit 2015 as “UMN 2014” in the document footer.
`
`5
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`
`Patent Owner served the District Court Defendants with complaints
`alleging infringement of the ’185 patent on November 6, 2014. Ex. 2005, 1;
`Ex. 2007, 1; Ex. 2009, 1; Ex 2011, 1. Patent Owner’s infringement
`allegations are based in part on functionality implemented by Petitioner’s
`base stations.4 Ex. 2026, 1–2; Ex. 2027, 1–2; Ex. 2028, 1–2; Ex. 2029, 2.
`As a result, the District Court Defendants demanded indemnification from
`Petitioner pursuant to the supply agreements. Ex. 2026, 2; Ex. 2027, 2; Ex.
`2028, 2; Ex. 2029, 2. Petitioner agreed to indemnify the District Court
`Defendants for the portion of any judgment relating to the base stations. Ex.
`2012, 12; Ex. 2013, 17; Ex. 2014, 14; Ex. 2015, 19; Ex. 2031, 3; Ex. 2032,
`3; Ex. 2033, 3; Ex. 2034, 3. Petitioner also moved to intervene in the
`District Court Litigation, and the District Court granted that motion on
`March 30, 2016. Ex. 1015, 2–3.
`Petitioner filed the Petition in this case on March 30, 2017. Paper 3,
`1. Petitioner also requested a stay of the District Court Litigation pending
`the outcome of this proceeding. Ex. 2037, 2–3. The District Court
`Defendants represented to the District Court that, if the stay was granted,
`they would voluntarily agree to be bound by the outcome of this proceeding
`for any ground of unpatentability that results in a final written decision. Ex.
`2042, 3. The District Court granted the stay. Ex. 2041, 21–22.
`
`
`4 Petitioner alleges that Patent Owner delayed in identifying the specific
`products accused of infringement. Reply 1. But Petitioner does not explain
`how that delay may be relevant to our privity analysis generally or to any of
`the specific Taylor categories discussed below. See id. at 4–12.
`
`6
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`
` Privity
`Patent Owner argues that the first, second, fourth, and fifth Taylor
`categories demonstrate that Petitioner is in privity with the District Court
`Defendants. Prelim. Resp. 14–29. Petitioner contends that none of the
`Taylor categories are applicable here. Pet. 5–8; Reply 4–12. We find it
`sufficient to address the second and fourth Taylor categories in this case.
`For the reasons discussed below, the evidence of record shows that
`Petitioner is in privity with the District Court Defendants for the purpose of
`applying § 315(b) in this case.
`1. Second Taylor Category
`Under the second Taylor category, “nonparty preclusion may be
`justified based on a variety of pre-existing ‘substantive legal relationship[s]’
`between the person to be bound and a party to the judgment.” Taylor, 553
`U.S. at 894. Here, Petitioner has a preexisting relationship with the District
`Court Defendants. Specifically, Petitioner has agreements with the District
`Court Defendants to supply them with the base stations that implement some
`of the functionality identified in Patent Owner’s infringement allegations.
`Ex. 2026, 1–2; Ex. 2027, 1–2; Ex. 2028, 1–2; Ex. 2029, 2. Further, that
`preexisting relationship includes substantive legal obligations. Namely, the
`supply agreements include indemnification provisions, and Petitioner has
`agreed to indemnify the District Court Defendants for the portion of any
`judgment relating to the base stations. Ex. 2012, 12; Ex. 2013, 17; Ex. 2014,
`14; Ex. 2015, 19; Ex. 2031, 3; Ex. 2032, 3; Ex. 2033, 3; Ex. 2034, 3. In
`other words, Petitioner has a preexisting substantive legal relationship with
`
`7
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`the District Court Defendants regarding the base stations at issue in the
`District Court Litigation.
`Petitioner argues that its supply agreements with the District Court
`Defendants are “little more than a routine statement of the obligations
`between indemnitor and indemnitee,” which is “not the type of relationship[]
`contemplated by Taylor.” Reply 7. We disagree. Taylor identifies
`preceding and succeeding owners of property, bailee and bailor, and
`assignee and assignor as examples of qualifying relationships, but expressly
`states that those examples are not limiting. Taylor, 553 U.S. at 894. Indeed,
`the Federal Circuit and the Board have indicated that an indemnity
`relationship is the type of relationship that can establish privity. Intel Corp.
`v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 839 (Fed. Cir. 1991); Ventex Co.
`v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 12–13
`(PTAB Jan. 24, 2019) (precedential); see also 18A Charles Alan Wright,
`Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure
`§ 4451 (3d ed. 2020) (“Wright & Miller”) (“Such relationships between a
`party and a nonparty are most often found when . . . an indemnitor
`participates in defending an action brought against its indemnitee.”). And,
`in this case, there is no ambiguity about whether the supply agreements
`obligate Petitioner to indemnify the District Court Defendants because
`Petitioner has agreed to do so. Ex. 2031, 3; Ex. 2032, 3; Ex. 2033, 3;
`Ex. 2034, 3.
`Petitioner argues that the District Court Defendants could not
`adequately represent Petitioner’s interests in the District Court Litigation.
`Pet. 5–6; Reply 6. Petitioner, though, does not explain specifically how the
`
`8
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`alleged lack of adequate representation relates to our consideration of the
`second Taylor category. See Pet. 5–6; Reply 6. Petitioner’s assertion may
`be relevant to the third Taylor category, which considers whether “a
`nonparty . . . was ‘adequately represented by someone with the same
`interests who [wa]s a party.’” Taylor, 553 U.S. at 894. But neither party in
`this case addresses the third Taylor category.
`Petitioner argues that it does not control the defense of the District
`Court Defendants. Pet. 6–7; Reply 7–8 (citing Ex. 1065 ¶¶ 7–8). But
`Petitioner does not explain specifically how the alleged lack of control
`relates to our consideration of the second Taylor category. See Pet. 6–7;
`Reply 7–8. We find Petitioner’s assertion regarding control more relevant to
`the fourth Taylor category, which considers whether “a nonparty . . .
`‘assume[d] control’ over the litigation in which [the] judgment was
`rendered.” Taylor, 553 U.S. at 895. Accordingly, we address Petitioner’s
`argument regarding control below in connection with the fourth Taylor
`category.
`Petitioner argues that its base stations are only a part of the “overall
`networks” that Patent Owner accuses of infringement in the District Court
`Litigation. Pet. 5–7; Reply 9. Petitioner, though, does not provide any
`specific reason why a preexisting substantive legal relationship that covers
`part of an accused product, as is the case here, does not satisfy the second
`Taylor category. See Pet. 5–7; Reply 9. Petitioner asserts that the Board
`found privity in a case where a supplier provided the entire accused product
`in a related litigation. Reply 9 (citing Microsoft Corp. v. Sci. Applications
`Int’l Corp., IPR2019-01311, Paper 35 at 8 (PTAB Jan. 27, 2020)). But
`
`9
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`Petitioner does not cite any authority indicating that privity is limited to that
`specific situation. See id.
`Finally, Petitioner argues that the Board’s precedential decision in
`Ventex is distinguishable from this case because Ventex involved an
`exclusive manufacturing agreement, whereas Petitioner’s supply agreements
`with the District Court Defendants are not exclusive. Reply 8. Petitioner’s
`argument is not persuasive. Ventex does not specifically rely on exclusivity
`as a factor when addressing the second Taylor category. See Ventex, Paper
`148 at 12–13. Rather, Ventex explains that the agreements of record include
`“an obligation to indemnify and defend” and “directly relate[] to the product
`accused of infringing the patent at issue.” Id. Likewise, in this case,
`Petitioner’s supply agreements with the District Court Defendants include
`indemnity obligations and directly relate to the base stations at issue in the
`District Court Litigation. Ex. 2031, 3; Ex. 2032, 3; Ex. 2033, 3; Ex. 2034, 3.
`In sum, for the foregoing reasons, the evidence of record shows that
`Petitioner had a preexisting substantive legal relationship with the District
`Court Defendants regarding the base stations at issue in the District Court
`Litigation.
`
`2. Fourth Taylor Category
`Under the fourth Taylor category, “a nonparty is bound by a judgment
`if she ‘assume[d] control’ over the litigation in which that judgment was
`rendered.” Taylor, 553 U.S. at 895. “The measure of control by a nonparty
`that justifies preclusion cannot be defined rigidly.” Wright & Miller § 4451.
`“If a nonparty either participated vicariously in the original litigation by
`exercising control over a named party or had the opportunity to exert such
`
`10
`
`
`
`PUBLIC VERSION
`
`IPR2017—01200
`
`Patent 8,718,185 B2
`
`control, then the nonparty effectively enjoyed his day in court, and it is
`
`appropriate to impute to him the legal attributes of party status for purposes
`
`of claim preclusion.” Gonzalez v. Banco Cent. Cmp, 27 F.3d 751, 758 (lst
`
`Cir. 1994).
`
`Here, the indemnification provisions in Petitioner’s supply agreements
`
`with the District Court Defendants specifically address the issue of control.
`
`Ex. 2012, 16; Ex. 2013, 14—15; Ex. 2014, 11; Ex. 2015, 14—15. Petitioner’s
`
`supply agreement with AT&T states that Petitioner—
`
`— Ex_2012,16.
`Petitioner’s supply agreement with Sprint states that Petitioner-
`
`— Ex. 2m w
`15. Petitioner’s supply agreement with T—Mobile states that Petitioner-
`
`— Ex. 2014, 11. And Petitioner’s supply agreement
`with Verizon states that Petitioner—
`
`
`
`—I Ex. 2015, 14—15. In other words, pursuant to the
`
`l a
`
`cements ermit the District Court Defendants
`
`5 Althou h the su
`
`
`
`
`
` Petitioner
`EX.2012,16:Ex.2013,15;Ex.2014,11;EX.2015,15.
`
`11
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`supply agreements, Petitioner
`
`
`
`
`
`Petitioner argues that it agreed to indemnify the District Court
`Defendants, but does not defend them or otherwise control the District Court
`Litigation. Pet. 5–7; Reply 9–10 (citing Ex. 1065 ¶¶ 7–9). In particular,
`Petitioner notes that after intervening in the District Court Litigation, it only
`“participated as a joint defendant” with the District Court Defendants.
`Reply 10. Petitioner’s argument is not persuasive. Actual control of a
`proceeding is not required; rather, preclusion is fair as long as the nonparty
`had a practical opportunity to control the proceeding. Wright & Miller
`§ 4451 (“Preclusion is fair so long as . . . the nonparty had the same practical
`opportunity to control the course of the proceedings that would be available
`to a party.”); Gonzalez, 27 F.3d at 758 (“If a nonparty . . . had the
`opportunity to exert such control, then the nonparty effectively enjoyed his
`day in court.”); TPG, 77 Fed. Reg. at 48,759 (“A common consideration is
`whether the non-party . . . could have exercised control over a party’s
`participation in a proceeding.”). As discussed above, the supply agreements
`demonstrate that Petitioner
`
`
` Ex.
`
`2012, 16; Ex. 2013, 14–15; Ex. 2014, 11; Ex. 2015, 14–15.
`Petitioner argues that it could not exercise complete control over the
`District Court Litigation because its base stations are only a part of the
`accused products. Pet. 5–7; Reply 10–11 (citing Ex. 1065 ¶ 7). Petitioner’s
`argument is not persuasive. The fourth Taylor category “does not require
`that the named party or parties totally abandon control to the nonparty.”
`
`12
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`Wright & Miller § 4451. “Instead, it should be enough that the nonparty has
`the actual measure of control or opportunity to control that might reasonably
`be expected between two formal coparties.” Id. Here, even if Petitioner did
`not have the opportunity to completely control the District Court Litigation,
`the supply agreements
`
`
` Ex.
`2012, 16; Ex. 2013, 14–15; Ex. 2014, 11; Ex. 2015, 14–15. We find that to
`be the amount of control Petitioner would reasonably expect if it were a
`formal coparty in the District Court Litigation. See Gonzalez, 27 F.3d at 758
`(“Substantial control means what the phrase implies; it connotes the
`availability of a significant degree of effective control in the prosecution or
`defense of the case.”).
`Petitioner argues that Patent Owner initially opposed Petitioner’s
`request to intervene in the District Court Litigation. Reply 11. Petitioner,
`though, does not explain specifically how that relates to our consideration of
`the fourth Taylor category. See id. Petitioner cites a Board decision that
`allegedly involved an unopposed, rather than an opposed, intervention. Id.
`(citing ARRIS Int’l PLC v. ChanBond, LLC, IPR2018-00572, Paper 21
`(PTAB July 20, 2018)). But, again, Petitioner does not explain specifically
`how that distinction is relevant to our privity analysis. See id.
`Lastly, Petitioner argues that it did not execute a written agreement to
`control the District Court Litigation. Reply 11. We disagree. Regardless of
`whether the fourth Taylor category requires a written agreement, in this case,
`Petitioner has one with the District Court Defendants. Specifically, as
`discussed above, Petitioner has written supply agreements with the District
`
`13
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`Court Defendants
`
`
`
` Ex.
`
`2012, 16; Ex. 2013, 14–15; Ex. 2014, 11; Ex. 2015, 14–15.
`In sum, for the foregoing reasons, the evidence of record shows that
`Petitioner had the opportunity to control the District Court Litigation with
`respect to the base stations that it supplies to the District Court Defendants.
`3. Summary
`The evidence of record indicates 1) that Petitioner has a preexisting
`substantive legal relationship with the District Court Defendants regarding
`the base stations at issue in the District Court Litigation; and 2) that
`Petitioner had the opportunity to control the defense of the District Court
`Defendants with respect to the base stations. Therefore, based on our
`consideration of the second and fourth Taylor categories, we determine that
`Petitioner is in privity with the District Court Defendants for the purpose of
`applying § 315(b).6
` 35 U.S.C. § 315(b)
`As discussed above, § 315(b) states that an inter partes review “may
`not be instituted if the petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in interest, or privy of
`the petitioner is served with a complaint alleging infringement of the
`patent.” Patent Owner served the District Court Defendants with complaints
`alleging infringement of the ’185 patent on November 6, 2014. Ex. 2005, 1;
`Ex. 2007, 1; Ex. 2009, 1; Ex 2011, 1. Petitioner filed the Petition more than
`
`
`6 We need not decide whether the evidence relating to either Taylor category
`individually is sufficient to find privity.
`
`14
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`one year later on March 30, 2017. Paper 3, 1. For the reasons discussed
`above, the evidence of record shows that Petitioner is in privity with the
`District Court Defendants for the purpose of applying § 315(b). Therefore,
`because Petitioner filed the Petition more than one year after the date on
`which its privy was served with a complaint alleging infringement of the
`’185 patent, the Petition is barred under § 315(b).
`III. CONCLUSION
`The evidence of record shows that the Petition was filed more than
`one year after the date on which a privy of Petitioner was served with a
`complaint alleging infringement of the ’185 patent. Therefore, the Petition
`is denied under § 315(b).
`
`IV. ORDER
`
`It is hereby
`ORDERED that the Petition is denied, and no trial is instituted;
`FURTHER ORDERED that this Decision is filed under seal and
`designated as “Board and Parties Only,” because it discusses the contents of
`documents filed under seal by the parties; and
`FURTHER ORDERED that within five (5) business days of this
`Decision, the parties shall jointly submit a proposed redacted version of this
`Decision by email to Trials@uspto.gov.
`
`
`15
`
`
`
`PUBLIC VERSION
`
`IPR2017-01200
`Patent 8,718,185 B2
`
`PETITIONER:
`
`J. Andrew Lowes
`John Russell Emerson
`Greg Webb
`Clint Wilkins
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`russ.emerson@haynesboone.com
`greg.webb.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`W. Karl Renner
`Lawrence K. Kolodney
`Christopher Hoff
`Andrew B. Patrick
`Andrew Dommer
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`kolodney@fr.com
`hoff@fr.com
`patrick@fr.com
`dommer@fr.com
`
`16
`
`
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
