PTAB Post 12/28
Trials@uspto.gov Paper 50
571-272-7822 Entered: December 28, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
BUNGIE, INC.,
Petitioner,
v.
WORLDS INC.,
Patent Owner.
____________
Case IPR2015-01264 (Patent 7,945,856 B2)
Case IPR2015-01319 (Patent 8,082,501 B2)
Case IPR2015-01321 (Patent 8,145,998 B2)
____________
Before KARL D. EASTHOM, KEN B. BARRETT, and
JASON J. CHUNG, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
ORDER
Conduct of the Proceedings
37 C.F.R. § 42.5
IPR2015-01264 (Patent 7,945,856 B2)
IPR2015-01319 (Patent 8,082,501 B2)
IPR2015-01321 (Patent 8,145,998 B2)
2
We received from Petitioner an email dated December 26, 2018,
asserting that the parties are unable to reach complete agreement as to the
contents of joint stipulations to be filed in these cases. We authorized, in our
Order dated November 29, 2018 (e.g., IPR2015-01264, Paper 48), the
parties to file joint stipulations directed to the limited issues remaining to be
resolved in these cases, which are on remand from the Court of Appeals for
the Federal Circuit. Specifically, we authorized the parties to file joint
stipulations regarding two categories of information that Petitioner
characterized as noncontroversial, non-testimonial evidence. Id. at 6–8, 10.
We also authorized and encouraged the parties to include additional
stipulations as to factual matters pertaining to the remaining issues in these
cases, that of collateral estoppel and real-party-in-interest (RPI). Id. at 8.
Petitioner, in its email, seeks our guidance on how to proceed and
offers to submit to us the proposed but disputed stipulations. Petitioner
represents that the stipulations include quotations from communications
exchanged as settlement negotiations between the parties. Petitioner does
not indicate that the disputed, proposed stipulations pertain to the categories
of information that were the subject of our authorization.
We received from Patent Owner an email also dated December 26,
2018, containing a response to Petitioner’s email. Patent Owner states that it
understands that the parties have reached agreement regarding stipulations
addressing the two authorized categories of information. Patent Owner
asserts that the disputed topics are those not raised by Petitioner during the
conference call with the Board that resulted in the Order mentioned above.
Patent Owner submits that it would be inappropriate to enter into the record
IPR2015-01264 (Patent 7,945,856 B2)
IPR2015-01319 (Patent 8,082,501 B2)
IPR2015-01321 (Patent 8,145,998 B2)
3
the substance of settlement discussions. Patent Owner further asserts that
some disputed, proposed stipulations include Petitioner’s characterizations
of evidence that is in the record or is authorized to be filed in the record.
Having considered the parties’ email submissions, our guidance to
Petitioner is to file joint stipulations pertaining to topics for which the parties
are willing to jointly stipulate and as limited to topics that were the subject
of our authorization in the referenced order. We deny Petitioner’s request to
submit, and do not authorize the submission or filing of, the disputed draft
stipulations. We see no need to hold a conference call with the parties
regarding the disputed stipulations. To the extent that the disputed
stipulations reflect characterizations of record evidence, Petitioner will have
the opportunity to present those characterizations via argument in the
forthcoming briefing.
This order does not alter the provisions set forth in our Order of
November 29, 2018, as modified by the Order of December 20, 2018 (e.g.,
IPR2015-01264, Paper 49) (revising the briefing schedule per Petitioner’s
request).
It is so ORDERED.
IPR2015-01264 (Patent 7,945,856 B2)
IPR2015-01319 (Patent 8,082,501 B2)
IPR2015-01321 (Patent 8,145,998 B2)
4
AI
