Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 15
`Entered: August 23, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`EVERYMD.COM LLC,
`Patent Owner.
`____________
`Case IPR2018-00050
`Patent 8,804,631 B2
`
`____________
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`571-272-7822
`
`
`
` Paper No. 15
`Entered: August 23, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`EVERYMD.COM LLC,
`Patent Owner.
`____________
`Case IPR2018-00050
`Patent 8,804,631 B2
`
`____________
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`I. INTRODUCTION
`A consolidated conference call in this proceeding and Case IPR2017-02027
`
`(Patent 9,137,192 B2) was held on August 22, 2018, between the parties and the
`panels. As quick background, on March 9, 2018, the U.S. Court of Appeals for the
`Federal Circuit entered a “Rule 36 Judgment” in EveryMD.com LLC v. Facebook,
`Inc., No. 2017-2105, thereby summarily affirming a determination by the U.S.
`District Court for the Central District of California that all the claims in U.S. Patent
`9,137,192 B2 (“the ’192 patent”) and all the claims in U.S. Patent 8,504,631 B2
`(“the ’631 patent”) are directed to non-statutory subject matter under 35 U.S.C.
`§ 101. Ex. 3001. On May 4, 2018, the Federal Circuit denied Patent Owner’s,
`EveryMD.com LLC (“EveryMD”), request for rehearing. In an email dated July
`24, 2018, EveryMD informed the panel for Case IPR2018-00050 that it would not
`file a petition for writ of certiorari with the Supreme Court. Now that there
`appears to be a “final” judgment of invalidity with respect to all the claims of the
`’192 patent and the ’631 patent, we initiated the consolidated conference call to
`discuss the impact of the “final” judgment on these proceedings.
`
`
`II. DISCUSSION
`We began the conference call by seeking clarification from the parties as to
`whether there was, indeed, a “final” judgment of invalidity with respect to all the
`claims of the ’192 patent and the ’631 patent, which are the patents at issue in these
`proceedings. The parties confirmed our understanding that all the claims in the
`’192 patent and all the claims in the ’631 patent are now invalid because the time
`period for filing a petition for writ of certiorari with the Supreme Court has
`2
`
`
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`expired. We then inquired as to whether either party disputes that we possess the
`authority to dismiss the petitions under 37 C.F.R. § 42.71(a), thereby terminating
`the trials without rendering any further decisions in accordance with 37 C.F.R.
`§ 42.72.
`EveryMD explained that it decided not file a petition for writ of certiorari
`with the Supreme Court for several reasons, including, among other things,
`because we already instituted a trial in each proceeding and, as a matter of right, it
`filed a Motion to Amend in each proceeding that proposes different claims than
`those determined to be invalid by the Federal Circuit. EveryMD referred us to the
`Federal Circuit’s general discussion of a motion to amend in Aqua Products, Inc. v.
`Matal, 872 F.3d, 1290 (Fed. Cir. 2017), and then explained that it should be
`afforded a full and fair opportunity to have its newly proposed claims considered
`by the respective panel, regardless of the fact that all the claims in the ’192 patent
`and all the claims in the ’631 patent are now invalid. In response, Petitioner,
`Facebook, Inc. (“Facebook”), explained that the rules governing an inter partes
`review proceeding permit us to take up petitions or motions in any order and, if we
`so choose, we may dismiss a petition if the circumstances presented do not favor
`judicial economy. Facebook argued that the circumstances presented here warrant
`dismissing the Petition filed in each proceeding. Facebook also argued that
`EveryMD’s position incorrectly presumes that the Motion to Amend filed in each
`proceeding has been granted, which, of course, is not the case. Facebook
`explained that we will have to expend additional resources in order to determine
`whether EveryMD’s newly proposed claims should be entered in each proceeding.
`When given the opportunity to have the last word, EveryMD explained that the
`3
`
`
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`Motion to Amend filed in Case IPR2017-02027 has been fully briefed. EveryMD
`represented that it was willing to waive oral argument in this case if the panel
`indicated their willingness to reach the merits of the Motion to Amend.
`After the conclusion of the consolidated conference call, we briefly
`deliberated and determined that we would benefit from additional briefing on this
`issue. In particular, we agreed that briefing is warranted to determine, when, as
`here, there is “final” judgment of invalidity with respect to all the claims at issue,
`do we possess the authority to dismiss a petition (under 37 C.F.R. § 42.71(a) or
`otherwise), thereby terminating a trial without rendering any further decisions in
`accordance with 37 C.F.R. § 42.72?
`
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that, pursuant to 37 C.F.R. § 42.20(d), each party is invited to
`file a brief in each proceeding that is tailored narrowly to address whether, based
`on the circumstances presented here, we possess the authority to dismiss the
`petition (under 37 C.F.R. § 42.71(a) or otherwise), thereby terminating the trial
`without rendering any further decisions in accordance with 37 C.F.R. § 42.72; and
`FURTHER ORDERED that each brief is limited to five (5) pages and is due
`no later than Friday, August 31, 2018.
`
`4
`
`
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`PETITIONER:
`Heidi L. Keefe
`Andrew C. Mace
`Mark R. Weinstein (pro hac vice)
`COOLEY LLP
`zFBEveryMD@cooley.com
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`
`
`PATENT OWNER:
`
`Frank Michael Weyer
`TECHCOASTLAW
`fweyer@techcoastlaw.com
`
`
`
`
`
`5
`
`
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