`571-272-7822
`
`Paper 25
`Date: March 8, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE, AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`IPR2020-00994 (Patent 7,104,347 B2)
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B21)
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 The parties are not authorized to use this caption in any subsequent filings.
`
`
`
`
`
`IPR2020-00994 (Patent 7,104,347 B2)
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B21)
`
`A conference call was held on March 5, 2021 between Judges
`
`Medley, Deshpande, and Peslak and counsel for Petitioner and Patent Owner
`to discuss Patent Owner’s March 1, 2021 email to the Board. Ex. 3001. In
`that email, Patent Owner requested that the Scheduling Orders entered in
`each of the three cases be substantially modified in order to have one
`consolidated oral hearing on September 1, 2021 for all three cases. Id.
`Petitioner opposed the request.
`
`Patent Owner requested a consolidated oral hearing in order to “to
`conserve party and Board resources.” Ex. 3001. Petitioner argued that the
`savings in resources would be minimal because each case involves a
`different patent with different claims necessitating, inter alia, multiple
`depositions of the parties’ declarants. For the following reasons, we deny
`Patent Owner’s request to modify any of the current Scheduling Orders.
`
`First, we agree with Petitioner that any savings in Board or party
`resources by having one consolidated hearing is minimal at best. With
`respect to Board resources, because three separate patents with different
`claims are involved in these cases, the Board must separately analyze the
`evidence in each case and issue three final written decisions. Patent Owner
`did not assert in the email or during the telephone conference that the actual
`time consumed by attending one hearing would be any less than the time
`consumed by attending a separate hearing on each patent. The savings in
`Board resources by having one hearing is therefore de minimis and does not
`constitute good cause to revise the Scheduling Orders.
`Second, we entered the Scheduling Order in IPR2020-00994 over
`three months ago on November 19, 2020. IPR2020-00994, Paper 20. Patent
`Owner filed its Response to the Petition on February 11, 2021 in accordance
`
`2
`
`
`
`IPR2020-00994 (Patent 7,104,347 B2)
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B21)
`
`with the Scheduling Order without any mention of a request to modify the
`Scheduling Order. Id., Paper 22. The oral hearing for IPR2020-00994, if
`requested by the parties, is scheduled for August 19, 2021 some two weeks
`prior to Patent Owner’s proposed September 1, 2021 date. Id. Paper 20, 11.
`Delaying the oral hearing at this late date would inconvenience the Board
`and impact our ability to orderly process and issue our Final Written
`Decision by the statutory deadline of November 19, 2021. Any potential
`savings in either Board or party resources does not outweigh the
`inconvenience to the Board if we were to modify the schedule.
`
`Accordingly, it is:
`
`ORDERED that Patent Owner’s request to modify the Scheduling
`
`Orders in IPR2020-00994, IPR2020-01299, and IPR2020-01386 is denied;
`and
`FURTHER ORDERED that the Scheduling Orders previously entered
`
`in IPR2020-00994, IPR2020-01299, and IPR2020-01386 remain in full
`force and effect.
`
`3
`
`
`
`IPR2020-00994 (Patent 7,104,347 B2)
`IPR2020-01299 (Patent 8,630,761 B2)
`IPR2020-01386 (Patent 7,237,634 B21)
`
`FOR PETITIONER:
`
`Jeffrey D. Sanok
`Vincent J. Galluzzo
`Scott L. Bittman
`CROWELL & MORING LLP
`jsanok@crowell.com
`vgalluzzo@crowell.com
`sbittman@crowell.com
`
`
`
`FOR PATENT OWNER:
`
`Ruffin B. Cordell
`Brian J. Livedalen
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`cordell@fr.com
`bvl@fr.com
`riffe@fr.com
`
`
`4
`
`
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