`571-272-7822
`
`
`Paper No. 6
` Entered: November 22, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STINGRAY DIGITAL GROUP, INC.
`Petitioner,
`
`v.
`
`MUSIC CHOICE,
`Patent Owner.
`
`
`Case IPR2018-00114
`Patent 9,357,245 B1
`
`
`
`Before MITCHELL G. WEATHERLY, GREGG I. ANDERSON, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2018-00114
`Patent No. 9,357,245 B1
`
`
`INTRODUCTION
`
`On April 5, 2017, Stingray Digital Group, Inc., (“Stingray” or
`“Petitioner”) filed a first petition (“IPR2017-01193”) to institute inter partes
`review of claims 1–9, 12–14, 16, and 17 of U.S. Patent No. 9,357,245 B1
`(“the ’245 patent”), arguing the claims are unpatentable as anticipated by
`publication WO 00/19662 to Mackintosh. On October 13, 2017, we
`instituted inter partes review of claims 1–9, 12–14, 16, and 17 of the
`’245 patent in IPR2017-01193.
`On October 23, 2017, Petitioner filed a second petition (“IPR2018-
`00114”) to institute inter partes review of claims 1–10 and 12–17 of the
`’245 patent, arguing claims 1–9, 12–14, 16, and 17 are unpatentable as
`anticipated by Mackintosh, and claims 10 and 15 are unpatentable as
`obvious over Mackintosh. On the same date, Petitioner filed a motion for
`joinder, seeking to join IPR2017-01193 and IPR2018-00114.
`On October 24, 2017, Music Choice (“Patent Owner”) filed a
`disclaimer under 35 U.S.C. § 253(a) of claims 1–9, 12–14, 16, and 17 of the
`’245 patent, all of the claims challenged in IPR2017-01193, and requested
`adverse judgment in that proceeding.
`On October 25, 2017, Stingray requested a conference call with the
`Board to discuss IPR2018-00114 and its accompanying motion for joinder,
`Music Choice’s disclaimer of claims 1–9, 12–14, 16, and 17 of the
`’245 patent, and Music Choice’s request for adverse judgment in IPR2017-
`01193.
`On October 31, 2017, the Board conducted a conference call with the
`parties. Stingray was represented by Heath Briggs and Joshua Raskin, and
`Music Choice was represented by Brian Rosenbloom and Martin Zoltick.
`2
`
`
`
`
`
`IPR2018-00114
`Patent No. 9,357,245 B1
`
`
`DISCUSSION
`
`Stingray argues the petition and accompanying motion for joinder in
`IPR2018-00114 should be granted prior to granting Music Choice’s request
`for adverse judgment in IPR2017-01193 because the petition and motion for
`joinder were timely filed prior to the request for adverse judgment. Stingray
`further argues it would be an inefficient use of judicial resources to deny the
`petition and motion for joinder in IPR2018-00114 because the validity of
`claims 10 and 15 of the ’245 patent remains an issue pending before the U.S.
`District Court for the Eastern District of Texas.
`Music Choice argues the petition and motion for joinder in IPR2018-
`00114 should not be treated as a stay to its request for adverse judgment in
`IPR2017-01193. Music Choice further argues granting its request for
`adverse judgment would promote the just, speedy, and inexpensive
`resolution of IPR2017-01193 because no claims would remain pending in
`that proceeding, and the proceeding could be terminated.
`The Board cannot decide the merits of Stingray’s petition and motion
`for joinder in IPR2018-00114 before receiving Music Choice’s preliminary
`response in that proceeding, or the expiration of the time for filing such a
`response. See 35 U.S.C. § 315(c). Until then, the Board may stay any action
`in IPR2017-01193. Id. § 315(d). The Board may also change the default
`times in IPR2018-00114 for filing any preliminary response to the petition,
`any opposition to the motion for joinder, and any reply to the opposition to
`the motion for joinder. See 35 U.S.C. §§ 313, 316(a)(4); see also 37 C.F.R.
`§ 42.5(c).
`Accordingly, we vacate the current scheduling order in IPR2017-
`01193, and order the parties to adhere to the following schedule in IPR2018-
`3
`
`
`
`
`
`IPR2018-00114
`Patent No. 9,357,245 B1
`
`00114. The Board has not yet decided how to proceed on the merits in
`IPR2017-01193 and IPR2018-00114.
`
`ORDER
`
`It is:
`
`
`ORDERED that the parties adhere to the following schedule in
`IPR2018-00114:
`1. December 6, 2017 – due date for Patent Owner’s opposition to
`Petitioner’s motion for joinder;
`2. December 20, 2017 – due date for Petitioner’s reply to Patent
`Owner’s opposition to motion for joinder;
`3. December 29, 20017 – due date for Patent Owner’s preliminary
`response to petition or waiver of right to file a preliminary
`response.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00114
`Patent No. 9,357,245 B1
`
`For PETITIONER:
`Heath J. Briggs
`Joshua L. Raskin
`Vimal Kapadia
`briggsh@gtlaw.com
`raskinj@gtlaw.com
`kapadiav@gtlaw.com
`
`
`For PATENT OWNER:
`Brian S. Rosenbloom
`Martin M. Zoltick
`Michael V. Battaglia
`Jennifer B. Maisel
`brosenbloom@frem.com
`mzoltick@rfem.com
`mbattaglia@rfem.com
`jmaisel@rfem.com
`
`
`
`
`
`5
`
`
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