`Tel: 571-272-7822
`
`Paper: 27
`Entered: November 18, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PUZHEN LIFE USA, LLC,
`Petitioner,
`v.
`ESIP SERIES 2, LLC,
`Patent Owner.
`
`
`Case IPR2017-02197
`Patent 9,415,130 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`IPR2017-02197
`Patent 9,415,130 B2
`On March 9, 2018, we instituted review of all challenged claims of
`U.S. Patent No. 9,415,130 B2 (“the ’130 patent”) on all grounds asserted in
`the Petition (Paper 1) filed by Puzhen Life USA, LLC (“Petitioner”). Paper
`10. On February 26, 2019, after receiving briefing and hearing argument
`from both Petitioner and ESIP Series 2, LLC (“Patent Owner”), we issued a
`Final Written Decision determining that each of the challenged claims was
`unpatentable. Paper 24. At some point,1 Patent Owner appealed from our
`Final Written Decision. On May 19, 2020, the Federal Circuit affirmed.
`ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir.
`2020). On October 13, 2020, Patent Owner’s petition for a writ of certiorari
`was denied by the U.S. Supreme Court. ESIP Series 2, LLC v. Puzhen Life
`USA, LLC, No. 20-228, 2020 WL 6037248 (U.S. Oct. 13, 2020).
`In the absence of any authorization from the Board, on November 12,
`2020, Patent Owner filed a paper styled “Notice Regarding Pending
`Supreme Court Case with Bearing on this IPR.” Paper 25. In this paper,
`Patent Owner notes that a case pending before the U.S. Supreme Court,
`Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458, could be resolved in a
`way that would cause “the Director [to] lack authority to issue a cancellation
`certificate cancelling any claims of [the ’130 patent].” Id. at 2. Patent
`Owner argues that, accordingly, the USPTO should wait to issue any such
`certificate until the Arthrex case has been decided. Id.
`
`
`1 The timing of Patent Owner’s appeal is unclear, because Patent Owner
`failed to comply with the requirement of 37 C.F.R. § 90.2(a)(1) that it file
`“[a] copy of the notice of appeal . . . with the Patent Trial and Appeal
`Board.” See Paper 24, 62 (“. . . parties to the proceeding seeking judicial
`review of the decision must comply with the notice and service requirements
`of 37 C.F.R. § 90.2.”).
`
`2
`
`
`
`IPR2017-02197
`Patent 9,415,130 B2
`Also in the absence of any authorization from the Board, on
`November 17, 2020, Petitioner filed a response to Patent Owner’s notice.
`Paper 26. Petitioner argues that there is no merit to Patent Owner’s
`argument because (1) this case is not among those cases that have been
`remanded to the Board for rehearing by new panels in light of the Federal
`Circuit’s Arthrex decision and (2) Patent Owner has forfeited any
`appointments-clause argument it may have by failing to raise the argument
`either before the Board or before the Federal Circuit. Id. at 2–3.
`“Relief, other than a petition requesting the institution of a trial, must
`be requested in the form of a motion.” 37 C.F.R. § 42.20(a). “A motion will
`not be entered without Board authorization,” which “may be provided in an
`order of general applicability or during the proceeding.” Id. § 42.20(b). To
`the extent that Patent Owner’s notice constitutes a motion seeking relief in
`the form of a delay in the issuance of the certificate required under 35 U.S.C.
`§ 318(b), Patent Owner neither sought nor received appropriate
`authorization, violating rule 42.20(b). To the extent that Patent Owner’s
`notice constitutes something other than a motion that nonetheless seeks
`relief, it violates rule 42.20(a). Either way, the filing is improper. We
`determine that the proper course is to expunge this improper filing. See 37
`C.F.R. § 42.5(a) (“The Board may determine a proper course of conduct in a
`proceeding for any situation not specifically covered by [Part 42 of Title 37
`of the Code of Federal Regulations] . . . .”).
`Similarly, Petitioner’s response to Patent Owner’s notice was filed
`without authorization. Although the purpose of Petitioner’s filing is merely
`to oppose the relief Patent Owner seeks, that still amounts to a request for
`
`3
`
`
`
`IPR2017-02197
`Patent 9,415,130 B2
`some form of relief, so the filing must comply with rule 42.20. Accordingly,
`we will expunge Petitioner’s filing as well.
`
`It is
`ORDERED that Patent Owner’s “Notice Regarding Pending Supreme
`Court Case with Bearing on this IPR,” Paper 25, is expunged from the
`record of this proceeding; and
`FURTHER ORDERED that Petitioner’s response to Patent Owner’s
`notice, Paper 26, is expunged from the record of this proceeding.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-02197
`Patent 9,415,130 B2
`
`
`PETITIONER:
`Mark A. Miller
`Bradley B. Jensen
`DORSEY & WHITNEY LLP
`miller.mark@dorsey.com
`jensen.bradley@dorsey.com
`
`
`
`
`PATENT OWNER:
`Gordon K. Hill
`PATE BAIRD, PLLC
`ghill@patebaird.com
`
`
`5
`
`
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