`Tel: 571-272-7822
`
`Paper 10
`Entered: January 8, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`RETAILMENOT, INC.,
`Petitioner,
`
`v.
`
`HONEY SCIENCE CORP.,
`Patent Owner.
`
`
`Cases PGR2019-00060, PGR2019-00061, IPR2019-015651
`Patent 10,140,625 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before LINDA E. HORNER, PATRICK R. SCANLON, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`HORNER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 This Order addresses issues that are the same in each of the identified
`cases. We exercise our discretion to issue one Order to be entered in each
`case. The parties are not authorized to use this style heading in subsequent
`papers.
`
`
`
`
`
`Cases PGR2019-00060, PGR2019-00061, IPR2019-01565
`Patent 10,140,625 B2
`
`
`Petitioner RetailMeNot, Inc. filed the three captioned petitions
`challenging U.S. Patent No. 10,140,625 (“the ’625 patent”) in August, 2019.
`Patent Owner Honey Science Corp. filed Patent Owner Preliminary
`Responses in December, 2019. The petitions are pending decisions on
`institution by the Board.
`Petitioner contacted the Board on January 6, 2020 to request
`permission to file certain exhibits in each case to make the Board aware of
`recent events in the co-pending district court litigation, RetailMeNot, Inc. v.
`Honey Science Corp., Case No. 1:18-cv-00937-CFC-MPT (D. Del.).
`Specifically, Petitioner seeks to submit the fully-briefed motion to stay the
`district court proceeding with respect to the ’625 patent. Petitioner also
`seeks to submit Patent Owner’s pending objections to the magistrate judge’s
`Report & Recommendation regarding claim construction of the ’625 patent,
`and Petitioner’s reply to these objections. Petitioner does not request
`additional briefing to address these materials.
`Petitioner represents that it met and conferred with Patent Owner
`about this request and that Patent Owner does not oppose Petitioner’s
`submission of these exhibits, so long as Patent Owner may submit two
`additional exhibits. Specifically, Patent Owner seeks to submit Applicant’s
`Interview Summary and Amendment, dated December 23, 2019, and the
`Examiner’s Interview Summary, dated December 31, 2019, from related
`U.S. Patent Appl. No. 16/172,685. Petitioner does not oppose Patent
`Owner’s request.
`The Board agrees that the briefing on the motion for stay of the
`co-pending district court litigation and the materials showing positions taken
`by the parties on claim construction may prove relevant to the issues facing
`
`2
`
`
`
`
`
`Cases PGR2019-00060, PGR2019-00061, IPR2019-01565
`Patent 10,140,625 B2
`
`the Board in one or more of the pending petitions. Further, the Board notes
`that the parties do not oppose each other’s requests.
`Thus, it is
`ORDERED that, the parties’ requests to submit the above-referenced
`materials in each of the proceedings, without further briefing, is granted; and
`FURTHER ORDERED that, the parties have three business days
`within which to file the requested materials along with updated exhibit lists.
`
`
`
`3
`
`
`
`
`
`Cases PGR2019-00060, PGR2019-00061, IPR2019-01565
`Patent 10,140,625 B2
`
`For PETITIONER:
`
`Robert A. Appleby
`Jonathan R. Carter
`Joel R. Merkin
`KIRKLAND & ELLIS LLP
`robert.appleby@kirkland.com
`carterj@kirkland.com
`jmerkin@kirkland.com
`
`For PATENT OWNER:
`
`Bob Steinberg
`Tara D. Elliott
`Lisa K. Nguyen
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`tara.elliott@lw.com
`lisa.nguyen@lw.com
`
`
`4
`
`
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