UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

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1 Paper No Entered: January 14, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GOOGLE, INC., Petitioner, v. ROCKSTAR CONSORTIUM US LP, ROCKSTAR CONSORTIUM LLC, and MOBILESTAR TECHNOLOGIES, LLC, Patent Owner and Real Parties-in-Interest. Case 1 Before JONI Y. CHANG, GEORGIANNA W. BRADEN, and KERRY BEGLEY, Administrative Patent Judges. CHANG, Administrative Patent Judge. ORDER Conduct of the Proceeding 37 C.F.R This Order addresses the same issues in the cases identified in the Appendix of this Order. Therefore, we exercise our discretion to issue one Order to be entered in each of the identified cases. The parties, however, are not authorized to use this style heading in any subsequent papers.

2 On January 13, 2015, the following individuals participated in a conference call for the inter partes reviews identified in the Appendix of the instant Order: (1) Kenneth Weatherwax, counsel for Patent Owners Rockstar Consortium US LP and MobileStar Technologies, LLC (collectively, Patent Owner ); (2) Aaron Maurer and Greg Gardella, counsel for Petitioner; 2 and (3) Joni Chang, Georgianna Braden, and Kerry Begley, Administrative Patent Judges. Patent Owner initiated a conference call to seek authorization to file a motion for an extension of time to file a preliminary response in each of the 17 proceedings at issue. Petitioner indicated that it would not oppose the motion. We have considered Patent Owner s arguments and the procedural posture of the proceedings. For the reasons set forth below, Patent Owner s request for leave to file a motion for an extension of time is denied. During the conference call, in support of its request, Patent Owner argued that a one-month delay in the deadline for filing a preliminary response in each proceeding is justified, because RPX Corporation and its wholly-owned subsidiary, RPX Clearinghouse LLC, (collectively, RPX ) executed an agreement to purchase the patents involved in the inter partes 2 Mr. Maurer represents Google, Inc. ( Google ), Petitioner for, IPR , and IPR , whereas Mr. Gardella represents Google, Petitioner for all other cases listed in the Appendix of this Order. 2

3 reviews identified in the Appendix of the instant Order. 3 Patent Owner also directed our attention to the Press Release dated December 23, 2014 (Ex. 3001), and a Form 8-K filed by RPX (Ex. 3002), which sets forth that [u]pon the closing of the Transaction, which is subject to regulatory approval and other customer conditions, syndicate participants will receive non-exclusive licenses to the patent assets in the Transaction. Ex. 3002, 1 (emphasis added). 4 Patent Owner indicated that the regulatory approval will take at least 30 days, and this 30-day time period may be extended. Patent Owner, however, did not identify all of the other customer conditions, nor the time frame when those conditions would be satisfied. Upon further inquiry, Patent Owner indicated that the parties will not enter a settlement agreement as to the inter partes reviews identified in the Appendix of the instant Order, or file a Joint Motion to Terminate these proceedings before us, until at least the regulatory approval has been completed. In accordance with 37 C.F.R. 42.5(c)(2), a request for an extension of time must be supported by a showing of good cause. Time extensions should not be granted on the basis of speculation and conjecture. Here, it is uncertain, at this time, whether the RPX purchase agreement of the involved patents will be approved, much less when it will be approved. Even if the 3 The involved patents also are listed in the Appendix of the instant Order. 4 For the purpose of clarity and expediency, we treat as representative, and all citations are to unless otherwise noted. 3

4 RPX purchase agreement is approved within 30 days, it is still uncertain when the parties will enter a settlement agreement as to the inter partes reviews or file a Joint Motion to Terminate these proceedings before us. Therefore, Patent Owner s request for a one-month extension of time across all 17 cases is based on speculation, rather than a showing of good cause. As we explained in our previous Order, although 37 C.F.R (b) provides a three-month time period for filing a preliminary response, a preliminary response is optional. Paper 6. The Board is charged with securing the just, speedy, and inexpensive resolution of every proceeding. See 37 C.F.R. 42.1(b). The time period for filing a preliminary response triggers the Board s three-month statutory period for determining whether or not to institute a trial. See 35 U.S.C. 314(b). An extension of time to file a preliminary response will cause an unnecessary delay in our determination under 35 U.S.C. 314(b) and, in turn, our final determination with respect to the patentability of the challenged claims under 35 U.S.C. 318(a), if a trial is instituted. For the foregoing reasons, we are not persuaded that Patent Owner presented an adequate basis to support its request for an extension of time with a showing of good cause. See 37 C.F.R. 42.5(c)(2). It is ORDERED that Patent Owner s request for leave to file a motion for an extension of time in each inter partes review identified in the Appendix of the instant Order is denied. 4

5 APPENDIX Case No. U.S. Patent No. 5,838,551 IPR ,937,572 B1 IPR ,937,572 B1 IPR ,128,298 IPR ,333,973 B1 IPR ,333,973 B1 IPR ,128,298 IPR ,037,937 IPR ,037,937 IPR ,128,298 IPR ,333,973 B1 IPR ,128,298 IPR ,128,298 IPR ,128,298 IPR ,765,591 B2 IPR ,463,131 B1 IPR ,463,131 B1 5

6 For PETITIONER: David C. Kiernan Aaron P. Maurer WILLIAMS & CONNOLLY, L.L.P. Scott A. McKeown Greg Gardella OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. For PATENT OWNER: Kenneth J. Weatherwax Parham Hendifar GOLDBERG, LOWENSTEIN & WEATHERWAX, L.L.P. 6