Trials@uspto.gov
`571-272-7822
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`
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`Paper 46
`Date: October 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`_______________
`
`Case PGR2017-00015
`Patent 9,527,612 B2
`_______________
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing and Termination
`37 C.F.R. §§ 42.71(d), 42.72
`
`
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`

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`PGR2017-00015
`Patent 9,527,612 B2
`
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`On May 3, 2018, we entered an order modifying our Decision on Institution
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`to institute post-grant review on all claims and all grounds raised in the Petition.
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`Paper 30 (“SAS Order”). Our SAS Order directed the parties to meet and confer
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`regarding the impact on the schedule, and to provide dates and times for a call with
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`the panel to discuss these issues. We explain the discussions we had with the
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`parties in more detail in our May 31, 2018 Order modifying the Scheduling Order.
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`Paper 36 (“Order”). As we discussed in our Order, Patent Owner’s counsel
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`contacted us advising us that “[o]ur client has decided to submit a single letter
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`(attached) as evidence and then move to final written decision on the current
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`record, waiving all further briefing, motions, and oral hearing. Tinnus also waives
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`all participation in future Board calls and continues to believe the record is
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`complete for the Board to move to final written decision.” Order, 3. The letter
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`was filed as Exhibit 2035 in this proceeding (“Letter”). In the Letter, Patent
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`Owner also states
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`By filing of this letter, Tinnus requests a rehearing with an expanded
`panel and petitions the Chief Administrative Patent Judge and avails
`itself of any other procedural remedy to vacate the institution decisions
`and terminate this proceeding, based on the record in this proceeding
`and in PGR2016-00030 and PGR2016-00031.
`
`Ex. 2035, 1. We will refer to this paragraph of the Letter as Patent Owner’s
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`“Request.”
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`As we noted in our Order, “[a]lthough Patent Owner’s request for an
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`expanded panel and petitioning the Chief Administrative Patent Judge
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`suffers from a number of procedural flaws, we will refer Patent Owner’s
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`request to the Chief Administrative Patent Judge.” Order, 4 n.1.
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`As we stated, Patent Owner’s Request suffers from procedural flaws,
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`but, in the interest of justice, we will consider it. See 37 C.F.R. § 42.5(c)(3).
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`We now turn to Patent Owner’s Request on the merits.
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`2
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`

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`PGR2017-00015
`Patent 9,527,612 B2
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`A. Expanded Panel Request
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`Our governing statutes and regulations do not provide for parties to request,
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`or panels to authorize, an expanded panel. See generally 35 U.S.C. § 6; 37 C.F.R.
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`§§ 41.1–42.412. The Chief Judge may consider panel expansions upon a
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`“suggestion” from a judge, panel, or party. PTAB SOP 1, 15; see also Apple Inc.
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`v. Rensselaer Polytechnic Inst., Case IPR2014-00319, slip op. at 2 n.1 (PTAB Dec.
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`12, 2014) (Paper 20) (expanded panel) (per curiam).
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`The standard operating procedure exemplifies some of the reasons for which
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`the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M) (Rev. 15). For
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`example, an expanded panel may be appropriate “where appropriate, to secure and
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`maintain uniformity of the Board’s decisions, e.g., in related cases ordinarily
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`involving different three judge panels.” Id. (§ III.M.1).
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`In this case, the acting-Chief Judge has considered Patent Owner’s
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`suggestion for an expanded panel, but has determined that an expanded panel is not
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`warranted.
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`B. Patent Owner’s Request to Terminate
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`As we understand it, Patent Owner requests rehearing of our Decision on
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`Institution and SAS Order, and requests that we “vacate the institution decisions
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`and terminate this proceeding, based on the record in this proceeding and in
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`PGR2016-00030 and PGR2016-00031.” Ex. 2035, 1. For the following reasons,
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`we deny the request.
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`When rehearing a decision whether to institute post-grant review, we review
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`the decision for an “abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
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`showing [the] decision should be modified lies with the party challenging the
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`decision.” 37 C.F.R. § 42.71(d). The request for rehearing “must specifically
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`3
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`PGR2017-00015
`Patent 9,527,612 B2
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`identify all matters the party believes the Board misapprehended or overlooked,
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`and the place where each matter was previously addressed in” the petition. Id.
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`Patent Owner has not shown that we have abused our discretion in this case.
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`We know of no legal basis to vacate our Decision on Institution in this case “based
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`on the record in this proceeding and in PGR2016-00030 and PGR2016-00031.”
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`Ex. 2035, 1. As we explained in detail in our order of March 26, 2018, we did not
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`agree with Patent Owner that the statutory estoppel provision applied in this case.
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`See Paper 26 (“Estoppel Order”). Patent Owner does not provide any reasons for
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`us to reconsider our Estoppel Order, so we decline to do so. Patent Owner
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`provides no other legal basis for us to rely on the record in those proceedings and
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`terminate.
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`We recognize the burden created by the Supreme Court’s decision in SAS
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`Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), and our modification of the
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`Decision on Institution “to include review of all challenged claims and all grounds
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`presented in the Petition.” Paper 30, 3. In making that modification, we gave
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`effect to Office policy promulgated by the Director that (1) “if the PTAB institutes
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`a trial, the PTAB will institute on all challenges raised in the petition,” and (2) “for
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`pending trials in which a panel has instituted only on some of the challenges raised
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`in the petition (as opposed to all challenges raised in the petition), the panel may
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`issue an order supplementing the institution decision to institute on all challenges
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`raised in the petition.” Office Guidance on the Impact of SAS on AIA Trial
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`Proceedings (“Office SAS Guidance”).1 In addition, there has been further
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`guidance provided by the Office explaining that in situations such as this, where
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`claims and grounds were initially denied under § 325(d), “the Board does not
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`1 Available at https://www.uspto.gov/patents-application-process/patenttrial-and-
`appeal-board/trials/guidance-impact-sas-aia-trial.
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`4
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`PGR2017-00015
`Patent 9,527,612 B2
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`anticipate vacating prior institution decisions. . . .” See USPTO SAS Q&A, C1
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`(SAS Q&A).2 Other panels of the Board have followed the Office SAS Guidance
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`and SAS Q&A. See Eset, LLC v. Finjan, Inc., Case IPR2017-01738, slip op. 9–10
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`(PTAB Aug. 10, 2018) (Paper 28) (following Office SAS Guidance). We institute
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`trial on behalf of the Director. See 37 C.F.R. § 42.4(a). Given the Office’s policy
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`guidance, we do not agree with Patent Owner that vacating the Decision on
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`Institution is warranted. Accordingly, we deny Patent Owner’s Request.
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`
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`ORDER
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`
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`Patent Owner’s request that we vacate our Decision on Institution, terminate
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`this proceeding, and for rehearing by an expanded panel is denied.
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`2 Available at
`https://www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf
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`5
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`

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`PGR2017-00015
`Patent 9,527,612 B2
`
`For Petitioner:
`
`Robert Maldonado
`rmaldonado@cooperdunham.com
`
`Tonia Sayour
`tsayour@cooperdunham.com
`
`Eric Maurer
`emaurer@bsfllp.com
`
`
`For Patent Owner:
`
`Robert Sterne
`rsterne-ptab@sternekessler.com
`
`Thomas Croft
`tcroft@dbllawyers.com
`
`Robert Spendlove
`rspendlove@laubscherlaw.com
`
`Jeffrey D. Ahdoot
`jahdoot@dbllawyers.com
`
`Brian Koide
`bkoide@dbllawyers.com
`
`Jason Eisenberg
`jasone-ptab@sternekessler.com
`
`Jonathan Tuminaro
`jtuminar-ptab@sternekessler.com
`
`Dallin Glenn
`dglenn-ptab@sternekessler.com
`
`Trent Merrell
`tmerrell-ptab@sternekessler.com
`
`6
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