In its Order, the Board denied Patent Owner’s request for authorization to file a Supplement to the Patent Owner Preliminary Response addressing Petitioner’s Updated Mandatory Notice. Following the filing of the Patent Owner Preliminary Response, Petitioner filed Updated Mandatory Notice stating now that Motorola Mobility and Google, Inc. are real parties-in-interest.  A decision on institution is due on September 18, 2014, and Patent Owner requested authorization to address the Updated Mandatory Notice.

Patent Owner requested to address the Updated Mandatory Notice because (1) the Notice is a relevant fact concerning Patent Owner’s case-dispositive arguments concerning real party-in-interest, and it should be given an equitable right to respond; (2) the Preliminary Response was less than the 60 pages allowed, therefore, Patent Owner should be permitted to use the remainder of those pages at this time; (3) Patent Owner could file the supplement within one week; (4) the Rules required Motorola Mobility to file any change of information within 21 days of the change and the Updated Mandatory Notice was filed more than 21 days after the acquisition; (5) ZOLL Lifecor Corp. v. Philips Electronics North America Corp., IPR2013-00606 (Paper 13, Mar. 20, 2014) supports Patent Owner’s position that the Petition should be denied because of the real party-in-interest; (6) Petitioner has failed to correct is Updated Mandatory Notice to comply with the Rules; (7) counsel for Patent Owner requested the call shortly after the Updated Mandatory Notice was filed; and (8) the Board would benefit from Patent Owner’s application of the facts in this case to its analysis of the statutes, rules, and cases cited.

Counsel for Petitioner indicated that it did not oppose the request, but would like an opportunity to respond. Counsel for Petitioner also indicated that it filed the Updated Mandatory Notice within 21 days of filing of the Preliminary Response, which is required by the Rules, that it disagreed with Patent Owner’s argument that ZOLL Lifecore is applicable to the facts in this proceeding, and that Patent Owner was not prejudiced by the filing of the Updated Mandatory Notice.

The Board was not persuaded that the supplement was warranted and denied Patent Owner’s request. The Board stated that it has been well-apprised of the applicable facts, statutes, rules, and case law, as well as the positions of the parties.  Therefore, it is able to apply the facts to the statutes, rules, and case law without further briefing by the parties.

Motorola Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00504
Paper 10: Order on Conduct of the Proceeding 
Dated: July 21, 2014 
Patent 7,382,771 
Before: Michael W. Kim, Patrick R. Scanlon, and Kristina M. Kalan
Written by: Kim