Shire Development LLCv.LCS Group, LLC

Patent Trial and Appeal Board

Jun 4, 2015

12666460 (P.T.A.B. Jun. 4, 2015)

Trials@uspto.gov Paper No. 33
Tel: 571-272-7822 Entered: June 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SHIRE DEVELOPMENT LLC,
Petitioner,
v.
LUCERNE BIOSCEINCES, LLC,1
Patent Owner.
_______________

Case IPR2014-00739
Patent 8,318,813 B2
_______________

PER CURIAM.

ENTRY OF ADVERSE JUDGMENT
37 C.F.R. § 42.73(b)

On May 18, 2015, we issued an Order to Show Cause Why Adverse
Judgment Against Patent Owner Should not be Entered (“Order to Show
Cause”). Paper 29. In that Order, Patent Owner was given ten days to show
cause why adverse judgment should not be entered against it. Id. at 2.

1 The patent at issue was assigned to Lucerne Biosciences, LLC, and
Lucerne Biosciences, LLC is the sole owner of the patent at issue.
Paper 17, 2.
IPR2014-00739
Patent 8,318,813 B2

2

After that Order was entered, we received an e-mail from Patent
Owner, to which it attached an e-mail it had sent to its counsel of record at
that time, Mr. Joseph Lucci, stating that Mr. Lucci was not authorized to
represent it in any matter, and that Patent Owner was represented by new
counsel. Paper 30, 2. Patent Owner argued further in the e-mail that the
patent at issue is “patentable and valid.” Id. at 1; Ex. 3001.
In response, we noted that an e-mail is not an official communication,
37 C.F.R. § 42.6(b)(1), and was also in violation of our order of December
23, 2014 (Paper 14), requiring all papers to be signed by Patent Owner’s
counsel of record. Paper 30, 1–2. Based on the representation in the e-mail,
we authorized Patent Owner’s counsel of record to file a motion to
withdraw, and ordered Patent Owner to update its mandatory notices
designating new counsel, as well as file a response to our Order to Show
Cause, within five business days of decision of a motion to withdraw. Id. at
4.
Patent Owner’s counsel of record filed a Motion to Withdraw as
Counsel (Paper 31) on May 22, 2015, which we granted on May 26, 2015
(Paper 32). In granting the Motion to Withdraw, we ordered Patent Owner:
to update its mandatory notices, and designate registered
counsel as lead counsel to represent it in this proceeding, as
well as back-up counsel, as well as file a response to the Order
to Show Cause why Adverse Judgment Should not be Entered
Against Patent Owner (Paper 29) within five (5) business days
from the date of this order.
Paper 32, 2.

IPR2014-00739
Patent 8,318,813 B2

3

In addition, we ordered that :
failure to do so by Patent Owner will be construed as Patent
Owner abandoning the contest, and adverse judgment will be
entered against Patent Owner.
Id.
Thus, Patent Owner was required to update its mandatory notices, as
well as respond to the Order to Show Cause by June 2, 2015, five business
days from May 26, 2015. Under 37 C.F.R. § 42.73(b)(4), abandonment of
the contest may be construed as a request for adverse judgment. As Patent
Owner has failed to update its Mandatory Notices, as well as respond to our
Order to Show Cause, within the specified time period, we conclude that
Patent Owner has abandoned the contest.

Under these circumstances, it is
ORDERED that adverse judgment is entered against Patent Owner as
to claims 1–13 of the patent at issue, U.S. Patent No. 8,318,813;
FURTHER ORDRED that claims 1–13 of U.S. Patent No. 8,318,813
are cancelled; and
FURTHER ORDERED that the hearing scheduled for July 10, 2015 is
cancelled.

IPR2014-00739
Patent 8,318,813 B2

4

PETITIONER:

Edgar Haug
Sandra Kuzmich
Laura Fanelli
Russell Garman
FROMMER LAWRENCE & HAUG LLP
EHaug@flhlaw.com
SKuzmich@flhlaw.com
LFanelli@flhlaw.com
RGarman@flhlaw.com

PATENT OWNER:

LUCERNE BIOSCIENCES, LLC
lucernebio@lucernebio.com