In its Order, the Board denied-in-part and dismissed-in-part the parties’ Joint Motion to Modify Schedule. The parties requested to modify Due Dates 3-7 in the Revised Scheduling Order by six months to one year in view of a merger agreement between the parties that should close sometime in 2015 after FTC approval. The parties also requested an extension of time to complete the trial under 35 U.S.C. § 326(a)(11). The Board issued an Order requiring additional information from the parties, and a Response was submitted. In the Response, the parties stated that the FTC extended its initial waiting period for at least six month, pushing the closure of the merger for at least six months. Additionally, if the FTC does not approve the merger, then the FTC may file a lawsuit to keep the merger agreement from closing. Therefore, the parties may need an extension of multiple years.
The Board found the parties’ response that they are optimistic that the FTC would approve the merger agreement is not meaningful because it is subjective and lacks objective facts. The parties also stated that until the merger closes, the parties may decide to cancel the merger for any reason and that it is only expected that the shareholders will approve the merger. The Board found that these facts show an uncertain future, and the parties have no desire to settle now. The Board held that this does not constitute good cause for extending Due Dates 3-7 because extensions are not granted on the basis of speculation.
The Board also inquired as to why the parties are unable to negotiate a settlement agreement that takes into account the uncertainty of FTC approval of the merger, but the parties implied that a settlement could only be reached if termination is without prejudice to the filing of another petition, which may or may not be accepted by the Board. The Board did not find this response meaningful because the parties did not explain why they cannot account for the uncertainty of the Board’s acceptance of a new petition.
Trulia, Inc. v. Zillow, Inc., CBM2013-00056
Paper 37: Order on Decision on Motion for Time Extension
Dated: September 23, 2014
Patent: 7,970,674 B2
Before: Jameson Lee, Josiah C. Cocks, and Michael W. Kim
Written by: Lee