Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 19
`Filed: October 9, 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 8,504,631 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`DECISION AND ORDER
`Vacatur of Institution, Dismissal of Petition, and Termination of Trial
`37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 19
`Filed: October 9, 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 8,504,631 B2
`_______________
`
`
`Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`DECISION AND ORDER
`Vacatur of Institution, Dismissal of Petition, and Termination of Trial
`37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72
`
`
`
`
`
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`In an Order entered on August 23, 2018, we invited each party to file
`a brief that is tailored narrowly to address whether, based on the
`circumstances presented here, we possess 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. Paper 15. In response, Patent Owner, EveryMD.com LLC
`(“EveryMD”) argues that our authority to terminate a trial is limited to the
`circumstance where parties have reached a settlement and jointly request
`termination. Paper 16. Petitioner, Facebook, Inc. (“Facebook”), contends
`that we possesses the authority to terminate the trial and the pending Motion
`to Amend has no impact on our authority to do so. Paper 17. Because of the
`unique circumstances presented by this matter, and for the reasons explained
`below, we vacate our Decision on Institution, dismiss the Petition, and
`terminate trial, thereby obviating the need to reach the pending Motion to
`Amend.
`
`Procedural History
`I.
`A timeline of relevant events regarding U.S. Patent No. 8,504,631 B2
`(Ex. 1001, “the ’631 patent”) is provided below.
`On May 10, 2017, the U.S. District Court for the Central District of
`1.
`California granted Petitioner’s motion to dismiss litigation asserting
`infringement of the ’631 patent. Ex. 1009, 21. The district court
`determined that the claims of the ’631 patent are not patent-eligible
`under 35 U.S.C. § 101 because they are directed to an abstract idea
`and they do not otherwise include an inventive concept. Id. at 14–21.
`
` 2
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`5.
`6.
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`On October 10, 2017, Facebook filed the Petition that resulted in the
`instant proceeding. Paper 2.
`On April 16, 2018, we instituted an inter partes review as to all the
`claims and all grounds set forth in the Petition. Paper 6, 17–18.
`On March 9, 2018, the U.S. Court of Appeals for the Federal Circuit
`entered a “Rule 36” Judgment affirming the district court’s
`unpatentability ruling. Ex. 3001.
`On July 3, 2018, EveryMD filed a Motion to Amend. Paper 9.
`On May 4, 2018, the Federal Circuit denied EveryMD’s request for a
`rehearing of the “Rule 36” Judgment. Paper 15, 1 (explaining that,
`“[o]n May 4, 2018, the Federal Circuit denied . . . [the] request for
`rehearing”).
`On July 24, 2018, EveryMD informed the panel that it would not
`appeal the Federal Circuit’s decision to the U.S. Supreme Court.
`Paper 15, 1 (explaining that, “[i]n an email dated July 24, 2018,
`EveryMD informed the panel . . . that it would not file a petition for
`writ of certiorari with the Supreme Court”).
`On August 22, 2018, we conducted a call with both parties and invited
`additional briefing from the parties concerning our authority to
`terminate at this stage of the proceeding. Paper 15.
`On August 24 and August 31, 2018, the parties provided further
`briefing regarding whether we possess the authority to terminate this
`proceeding and, if so, whether we should exercise that authority based
`on the circumstances presented here. Papers 16, 17.
`In summary, the courts have finally adjudicated all claims of the ’631
`patent as unpatentable. Facebook’s original Petition concerning obviousness
`
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`2.
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`3.
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`4.
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`7.
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`8.
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`9.
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`IPR2018-00050
`Patent 8,504,631 B2
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`of the claims of the ’631 patent is, unquestionably, moot. The only
`substantive paper that remains for our consideration is the pending Motion to
`Amend.
`
`II. Analysis of Whether the Board has Legal Authority to
`Terminate a Proceeding
`
`Pursuant to the applicable statutes and regulations, we hold that we
`may dismiss the Petition (Paper 2), thereby terminating this proceeding. In
`particular, 37 C.F.R. § 42.71(a) provides that “[t]he Board may take up
`petitions or motions for decisions in any order, may grant, deny, or dismiss
`any petition or motion, and may enter any appropriate order.” A “petition”
`is defined as “a request that a trial be instituted” and a “motion” is defined as
`“a request for relief other than by petition.” 37 C.F.R. § 42.2. Thus, the
`regulations expressly provide the Board with broad authority to dismiss a
`petition where appropriate; such authority is notably not constrained by the
`existence of pending motions, such as a motion to amend.
`The Board’s broad authority to dismiss the Petition, thereby
`terminating this proceeding, is further confirmed by 37 C.F.R. § 42.72,
`which states “[t]he Board may terminate a trial without rendering a final
`written decision, where appropriate, including where the trial is consolidated
`with another proceeding or pursuant to a joint request under 35 U.S.C. [§§]
`317(a) or 327(a).”
`
`EveryMD contends that it is not appropriate under 37 C.F.R. § 42.72
`for the Board to terminate the trial for any ground other than settlement at
`the joint request of the parties. Paper 17, 2–3. We are not persuaded by
`EveryMD’s argument in this regard because it is inconsistent with the broad
`
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`IPR2018-00050
`Patent 8,504,631 B2
`
`authority set forth in the regulation. Rather than limit the Board’s
`termination authority, the regulation expands it by explicitly setting forth
`special circumstances under which it also applies. 37 C.F.R. § 42.72
`(“where appropriate, including . . .”) (emphasis added). The regulation
`further provides the Board with expansive discretion and flexibility to
`terminate in all “appropriate” circumstances. See also 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 this part . . . .”).
`
`The regulations identified above are consistent with the applicable
`United States Code, which specifically contemplates dismissal of petitions
`after institution. In particular, 35 U.S.C. § 318(a) states, in relevant part,
`that, “[i]f an inter partes review is instituted and not dismissed under this
`chapter, the Patent Trial and Appeal Board shall issue a final written
`decision . . . .” 35 U.S.C. § 318(a) (emphasis added.)
`Our reviewing court’s interpretation of 35 U.S.C. § 318(a) supports
`this analysis. In Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839
`F.3d 1382, 1383 (Fed. Cir. 2016), the Federal Circuit held that the Board’s
`vacatur of its decision on institution and termination of proceedings was
`final and non-appealable under 35 U.S.C. § 314(d). In reaching this holding,
`the Federal Circuit was not persuaded by Medtronic’s argument that the
`Board lacked authority to reconsider its prior institution decision. Id. at
`1385. The court explained that “[35 U.S.C.] § 318(a) contemplates that a
`proceeding can be ‘dismissed’ after it is instituted, and, as [the court’s] prior
`cases have held, ‘administrative agencies possess inherent authority to
`reconsider their decisions, subject to certain limitations, regardless of
`
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`IPR2018-00050
`Patent 8,504,631 B2
`
`whether they possess explicit statutory authority to do so.’” Id. (citations
`omitted).
`
`Furthermore, as Facebook emphasizes (Paper 17, 4), the United States
`Code expressly provided the Director of the U.S. Patent and Trademark
`Office with authority to prescribe regulations “establishing and governing
`inter partes review under this chapter and the relationship of such review to
`other proceedings under this title.” 35 U.S.C. § 316(a)(4). Under this
`statute, the Director promulgated, for example, 37 C.F.R. § 42.72 as
`governing an inter partes review, which provides the Board the authority to
`dismiss a petition “where appropriate,” including where, as here, dismissal is
`appropriate in view of other proceedings under Title 35 (e.g., a final
`adjudication in a related district court infringement action).
`
`For all these reasons, we conclude that we possess the authority to
`dismiss the instant Petition, thereby terminating trial, where doing so is
`“appropriate” under 37 C.F.R. § 42.72.
`
`III. Analysis of Whether it is Appropriate to Dismiss the
`Petition and Terminate Trial
`
`Under the unique circumstances presented here, we determine that it
`is appropriate for us to reconsider and vacate our prior Decision on
`Institution, dismiss the Petition, and terminate trial, thereby obviating the
`need to address the pending Motion to Amend. The following factors
`support this determination:
`1.
`The courts have determined, with finality, that all existing claims of
`the ’631 patent are unpatentable. As a result, every ground of
`unpatentability set forth in the Petition is now moot. Cf. Asghari-
`
` 6
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`2.
`
`IPR2018-00050
`Patent 8,504,631 B2
`
`Kamrani v. United Servs. Auto. Ass’n, No. 2018-1040, 2018 WL
`4334150, at *1 (Fed. Cir. Sept. 11, 2018) (non-precedential)
`(dismissing the appeal of a final written decision in a covered business
`method patent review as moot because the parties agreed “affirmance
`of the district court’s in-eligibility decision has the effect of
`invalidating all claims” of the patent at issue). From the outset of this
`proceeding, the panel has expressed concern with moving forward
`with this inter partes review given the courts’ unpatentability
`determinations. See, e.g., Paper 5 (Order discussing the impact of the
`courts’ decisions on this proceeding).
`EveryMD’s Motion to Amend was filed after the Federal Circuit
`affirmed the district court’s decision on unpatentability.
`The term of a patent grant begins on the date on which the patent
`issues and ends twenty (20) years from the date on which the
`application for the patent was filed in the United States, “or, if the
`application contains a specific reference to an earlier filed application
`or applications under section 120, 121, 365(c), or 386(c), from the
`date on which the earliest such application was filed.” 35 U.S.C.
`§ 154(a)(2) (2012 & Supp. III 2015). The earliest patent application
`referenced for the benefit of priority under 35 U.S.C. § 120 for the
`’631 patent was filed on November 23, 1999 (Ex. 1001, [63]), and the
`’631 patent has no term extensions. The term of the ’631 patent,
`therefore, will expire no later than November 23, 2019.
`Our statutory deadline for issuing a final written decision in this
`matter would be April 16, 2019. EveryMD’s proposed, substitute
`claims, even if permitted by the Board, would not take effect until
`
`3.
`
` 7
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`IPR2018-00050
`Patent 8,504,631 B2
`
`after the ’631 patent’s expiration because there is roughly seven
`months between the due date for a final written decision (i.e., April
`16, 2019) and the expiration date of the ’631 patent (i.e., November
`23, 2019), and this period of time cannot possibly account for any
`Federal Circuit appeal, requests for rehearing, and issuance of an inter
`partes review certificate. Therefore, even if we were to grant
`EveryMD’s Motion to Amend, and assuming a typical appeal process,
`the ’631 patent would be likely to expire prior to EveryMD’s
`proposed, substitute claims becoming effective. As such, resolution
`of the Motion to Amend on the merits would be an inefficient use of
`the Board’s resources.
`Consideration of EveryMD’s Motion to Amend would also be an
`inefficient use of the Board’s resources because the regulations
`provide that a motion to amend may be denied where “[t]he
`amendment does not respond to a ground of unpatentability involved
`in the trial.” 37 C.F.R. § 42.121. As we explain above, the courts’
`decisions have rendered moot all grounds of unpatentability that
`Facebook has raised in the trial. Because there is no ground of
`unpatentability remaining in the trial, it is difficult, if not impossible,
`to determine how EveryMD’s proposed amendments respond to a
`“ground of unpatentability involved in the trial.”
`Facebook has requested termination of this matter. See Paper 17.
`This proceeding remains at a relative early stage because Facebook
`has not filed an opposition to EveryMD’s Motion to Amend and no
`final written decision is due until April 16, 2019.
`
`5.
`6.
`
`4.
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`IPR2018-00050
`Patent 8,504,631 B2
`
`It is undisputed that we have discretion to deny institution. 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)
`(explaining that, under § 314(a), “the [U.S. Patent and Trademark Office] is
`permitted, but never compelled, to institute an [inter partes review]
`proceeding”). The “finite resources of the Board” is one of many factors
`that may be considered in considering whether or not to institute an inter
`partes review. Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`Case IPR2016-01357, slip op. at 15–16 (PTAB Sept. 6, 2017) (Paper 19)
`(precedential). Assessing amendments to claims that the courts have
`adjudicated, with finality, to be unpatentable, particularly when those
`amendments are unlikely to be entered prior to expiration of the subject
`patent, is an inefficient use of the Board’s resources. The Board’s finite
`resources could be more efficiently used, for example, assessing
`amendments to claims that will not expire prior to a final resolution of the
`issues raised by the parties. Thus, the factor considering the finite resources
`of the Board weighs heavily in favor of denying institution here.
`Because it would be inefficient for the Board to allocate further
`limited resources to this particular inter partes review, we vacate our
`Decision on Institution, dismiss the Petition, and terminate trial, thereby
`obviating the need to address the pending Motion to Amend.
`
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`IPR2018-00050
`Patent 8,504,631 B2
`
`IV. ORDER
`Accordingly, it is:
`ORDERED that our April 16, 2018, decision instituting an inter
`partes of the ’631 patent (Paper 6) is hereby vacated;
`FURTHER ORDERED that the Petition in Case IPR2018-00050
`(Paper 2) is hereby dismissed;
`FURTHER ORDERED that Case IPR2018-00050 is hereby
`terminated with respect to both Facebook and EveryMD; and
`FURTHER ORDERED that the oral argument originally scheduled
`for January 10, 2019, is cancelled.
`
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`10
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`IPR2018-00050
`Patent 8,504,631 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Andrew C. Mace
`Mark Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`
`
`
`For PATENT OWNER:
`
`Frank Michael Weyer
`TECHCOASTLAW
`fweyer@techcoastlaw.com
`
`
`
`
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`11
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