Takeaway: The AIA does not provide for “replacement” of a party to a proceeding. Therefore, if a patent owner assigns the challenged patent and stops participating in the proceeding, the Board may proceed directly to the final written decision without further input from the parties.

In its Order, the Board vacated Due Dates 2-7 of the Scheduling Order and determined that the case is ready for final decision following notice by Patent Owner’s counsel that Patent Owner assigned the challenged patent to a third party and would take no further action in the case, unless required by the Board.

During a conference call, Patent Owner’s counsel indicated that he intended to withdraw from the case because the Patent Owner assigned the challenged patent to a third party. The Board indicated that in light of the representations by Patent Owner’s counsel, the Board was considering vacating Due Dates 2-7, and proceeding to a final written decision without further input from either party. Counsel for Petitioner indicated that they would not be opposed to such an action, if taken by the Board.

The Board advised Patent Owner’s counsel that the Board’s authorization is required prior to seeking withdrawal. The Board further stated that the attorneys designated as counsel of record would remain as counsel of record until new lead and backup counsel are identified by an appropriate power of attorney. The Board then advised counsel and Patent Owner that the AIA does not provide for the “replacement” of a party.

In light of the representations to the Board by counsel for both parties, the Board determined that the Due Dates set by the Scheduling Order were unnecessary, vacated them, and submitted the case for Final Decision.

Librestream Technoloiges, Inc. v. Wireless Remote System LLC., IPR2014-00369
Paper 16: Order on Conduct of the Proceedings
Dated: October 10, 2014
Patent 6,317,039
Before: Kristen L. Droesch, Michael W. Kim, and Gregg I. Anderson
Written by: Anderson
Related Proceedings: Net2Phone, Inc. v. eBay Inc., Skype Inc., Civil Action No. 06-2469 (D.N.J.) and Innovative Communications Technologies, Inc. v. Stalker Software, Inc., Civil Action No. 2:12-cv-00009-RGD-TEM (E.D.Va.); Ex partereexamination No. 90/010,416