Ex Parte 6,605,038 B1 et al

Patent Trial and Appeal Board

Nov 10, 2015

95002354 (P.T.A.B. Nov. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,354 09/14/2012 6,605,038 B1 92092-891657 3404
23370 7590 11/10/2015
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/10/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BASIS SCIENCE, INC.,
Requester

v.

BODYMEDIA, INC.,
Patent Owner
____________

Appeal 2015-004784
Reexamination Control 95/002,354
Patent 6,605,038 B1
Technology Center 3900
____________

Before IRVIN E. BRANCH, Administrative Patent Judge.

ORDER
TO SHOW CAUSE

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SUMMARY
This appeal from an inter partes reexamination proceeding was
docketed at the Board on April 2, 2015. On October 14, 2015, an oral
hearing was conducted, during which the matter of related proceedings in
the Office was raised. Patent Owner confirmed that there are six other inter
partes reexaminations related to the instant inter partes reexamination
proceeding based upon six patents related to the underlying patent in this
proceeding. Patent Owner filed an appellant’s brief on May 19, 2014, which
does not identify any of the related inter partes reexaminations either in the
“Related Appeals and Interferences” section, or in the “Related Proceedings
Appendix.” Requester filed a respondent’s brief on June 19, 2014, which
does not identify any of the related inter partes reexaminations either in the
“Related Appeals and Interferences” section, or in the “Related Proceedings
Appendix.” Patent Owner filed a rebuttal brief on September 22, 2014,
which similarly does not mention any of the related inter partes
reexaminations.
RELEVANT AUTHORITY
37 C.F.R. § 41.1(b) provides:
The provisions of Part 41shall be construed to secure the
just, speedy, and inexpensive resolution of every proceeding
before the Board.

37 C.F.R. § 41.8 provides:
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the
initiation of a contested case (§ 41.101), and within 20 days of
any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
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(2) Each judicial or administrative proceeding that could
affect, or be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of
a Board proceeding must file a notice with the Board of the
judicial review within 20 days of the filing of the complaint or
the notice of appeal. The notice to the Board must include a
copy of the complaint or notice of appeal. See also §§ 1.301 to
1.304 of this title.

37 C.F.R. § 41.67 provides in pertinent part:
(c)(1) The appellant’s brief shall contain the following
items under appropriate headings and in the order indicated in
paragraphs (c)(1)(i) through (c)(1)(xi) of this section.
(i) Real party in interest. A statement identifying by
name the real party in interest.
(ii) Related appeals, interferences, and trials. A
statement identifying by application, patent, appeal,
interference, or trial number all other prior and pending appeals,
interferences, trials before the Board, or judicial proceedings
known to appellant, the appellant’s legal representative, or
assignee which may be related to, directly affect or be directly
affected by or have a bearing on the Board’s decision in the
pending appeal. Copies of any decisions rendered by a court or
the Board in any proceeding identified under this paragraph
must be included in an appendix as required by paragraph
(c)(1)(xi) of this section.
. . .
(x) Related proceedings appendix. An appendix
containing copies of decisions rendered by a court or the Board
in any proceeding identified pursuant to paragraph (c)(1)(ii) of
this section.

37 C.F.R. § 41.68 provides in pertinent part:
(b)(1) The respondent brief shall contain the following
items under appropriate headings and in the order here
indicated, and may include an appendix containing only those
portions of the record on which reliance has been made.
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(i) Real Party in Interest. A statement identifying by
name the real party in interest.
(ii) Related Appeals, Interferences, and trials. A
statement identifying by application, patent, appeal,
interference, or trial number all other prior and pending appeals,
interferences or judicial proceedings known to respondent, the
respondent’s legal representative, or assignee which may be
related to, directly affect or be directly affected by or have a
bearing on the Board’s decision in the pending appeal. Copies
of any decisions rendered by a court or the Board in any
proceeding identified under this paragraph must be included in
an appendix as required by paragraph (b)(1)(ix) of this section.
. . .

(ix) Related proceedings appendix. An appendix
containing copies of decisions rendered by a court or the Board
in any proceeding identified pursuant to paragraph (b)(1)(ii) of
this section.
37 C.F.R. § 11.18 provides:
(a) For all documents filed in the Office in patent,
trademark, and other non-patent matters, and all documents
filed with a hearing officer in a disciplinary proceeding, except
for correspondence that is required to be signed by the applicant
or party, each piece of correspondence filed by a practitioner in
the Office must bear a signature, personally signed or inserted
by such practitioner, in compliance with § 1.4(d) or § 2.193(a)
of this chapter.
(b) By presenting to the Office or hearing officer in a
disciplinary proceeding (whether by signing, filing, submitting,
or later advocating) any paper, the party presenting such paper,
whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own
knowledge are true, all statements made therein on information
and belief are believed to be true, and all statements made
therein are made with the knowledge that whoever, in any
matter within the jurisdiction of the Office, knowingly and
willfully falsifies, conceals, or covers up by any trick, scheme,
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or device a material fact, or knowingly and willfully makes any
false, fictitious, or fraudulent statements or representations, or
knowingly and willfully makes or uses any false writing or
document knowing the same to contain any false, fictitious, or
fraudulent statement or entry, shall be subject to the penalties
set forth under 18 U.S.C. 1001 and any other applicable
criminal statute, and violations of the provisions of this section
may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and
belief, formed after an inquiry reasonable under the
circumstances,
(i) The paper is not being presented for any improper
purpose, such as to harass someone or to cause unnecessary
delay or needless increase in the cost of any proceeding before
the Office;
(ii) The other legal contentions therein are warranted by
existing law or by a nonfrivolous argument for the extension,
modification, or reversal of existing law or the establishment of
new law;
(iii) The allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for
further investigation or discovery; and
(iv) The denials of factual contentions are warranted on
the evidence, or if specifically so identified, are reasonably
based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv)
of this section are, after notice and reasonable opportunity to
respond, subject to such sanctions or actions as deemed
appropriate by the USPTO Director, which may include, but are
not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of
Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a
paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
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(d) Any practitioner violating the provisions of this
section may also be subject to disciplinary action.
37 C.F.R. § 11.19(a) provides:
All practitioners engaged in practice before the Office;
all practitioners administratively suspended; all practitioners
registered to practice before the Office in patent cases; all
practitioners inactivated; all practitioners authorized under
§11.6(d) to take testimony; and all practitioners transferred to
disability inactive status, reprimanded, suspended, or excluded
from the practice of law by a duly constituted authority,
including by the USPTO Director, are subject to the
disciplinary jurisdiction of the Office. Practitioners who have
resigned shall also be subject to such jurisdiction with respect
to conduct undertaken prior to the resignation and conduct in
regard to any practice before the Office following the
resignation. A person not registered or recognized to practice
before the Office is also subject to the disciplinary authority of
the Office if the person provides or offers to provide any legal
services before the Office.

ORDER
In light of the above, and to preserve scarce judicial resources, it is
hereby ORDERED:
1) That Patent Owner, within 14 days, show cause why the Board
should not dismiss the appeal in this inter partes reexamination for
failing to properly identify the inter partes reexaminations related
to this inter partes reexamination proceeding.
2) In the absence of a response from Patent Owner, the appeal shall
stand dismissed.

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PATENT OWNER:
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309

THIRD-PARTY REQUESTER:
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041