/>iIn its Decision, the Board denied Patent Owner’s request for rehearing of the Board’s decision to institute trial in a covered business method patent review of U.S. Patent No. 8,370,211 B2.
The Board entered its decision to institute trial notwithstanding an underlying dispute concerning the ownership of the ’211 patent. Patent Owner is the patent owner of record in a 2012 nunc pro tunc assignment recorded at the USPTO in 2013. Before Petitioner filed the petition for CBM review, Patent Owner sued both Petitioner and a third party in separate cases in district court alleging infringement of the ’211 patent. The third party sought summary judgment on the grounds that it— not Patent Owner—is the actual owner of the ’211 patent.
After the Board’s decision to institute, the district court entered an order staying the third party’s case pending the district court’s decision on the issue of ownership. The district court also stayed the litigation against Petitioner pending the outcome of the CBM proceedings.
Patent Owner requested rehearing of the Decision to Institute, arguing that the circumstances that led to the Decision to Institute no longer exist because the litigation with the third party is stayed. Following a telephone conference with the Board, Patent Owner apparently sought, and the district court granted, expansion of the stay in the case against Petitioner so that it is stayed pending the decision on ownership too.
Petitioner opposed Patent Owner’s request for rehearing. It argued that (1) it would be prejudiced by terminating the present CBM review because resolution of the ownership dispute and related appeals could take years, (2) it would be required to pay another filing fee to institute another CBM after the ownership dispute is resolved, and (3) Patent Owner would have an opportunity to file another preliminary response in that proceeding. Petitioner also argued that the third party’s interests were protected by an agreement between them, but the Board rejected that argument.
The Board noted that Patent Owner did not identify “any matter which the Board overlooked or misapprehended” and determined that neither Patent Owner’s consent to resolve the ownership issues in the district court, nor the agreement between Petitioner and the third party, creates changed circumstances under which it should reverse its Decision to Institute. The Board stated that the ownership dispute is a collateral matter that does not affect its jurisdiction in the proceedings. Although the Board recognized that circumstances may result in the third party having an interest in the outcome of the proceeding, its interest currently is speculative. The Board noted that it may consider a motion by the third party to substitute as Patent Owner if the third party ultimately is determined to be the actual owner.
After commenting that the Patent Owner asserts in district court that it is “both the record owner and the actual owner of the ’211 Patent,” the Board stated that it was not persuaded by Patent Owner’s “effort to terminate [the] proceeding based on its convenient speculation that [the third party], and not Patent Owner ACN could be the actual owner of the ’211 Patent” and denied the request for rehearing.
The Jewelry Channel, Inc. USA d/b/a Liquidation Channel v. America’s Collectibles Network, Inc., CBM2014-00119
Paper 17: Decision Denying Request for Rehearing
Patent: 8,370,211 B2
Dated: January 6, 2015
Before: Linda M. Gaudette, Brian J. McNamara, and David C. McKone
Written by: McNamara
Related Proceedings: America’s Collectibles Network, Inc. v. The Jewelry Channel, Inc. USA d/b/a Liquidation Channel, No. 3:13cv334 (E.D. Tenn.)
