Denying Motion to Reconstitute Petitioner CBM2014-00013


Takeaway: Co-petitioners must speak with one voice, and parties that wish to be separately represented should file a separate Petition.

In its Decision, the Board dismissed-in-part and otherwise denied Petitioner’s Motion to Reconstitute itself by excluding Apple Inc. from the proceeding. Specifically, Petitioner requested elimination of Apple without any estoppel against Apple and authorization for Apple to file a separate petition by itself that is identical to the one filed in this proceeding with a request to join the new proceeding with this proceeding. Previously, the Board had ruled that even though there were multiple entities listed as petitioners, they must speak as one voice and one “Petitioner” when filing papers with the Board. After that, Petitioner attempted to unilaterally reconstitute itself without Apple, and the Board filed an order stating that this was inappropriate and Apple was still a member of the five companies regarded as Petitioner. Petitioner then requested leave to file a Motion to Reconstitute itself, and the Board authorized the briefing.

Regarding the request to not impose future estoppel, the Board stated that estoppel is determined by the tribunal for which the issue of estoppel against Apple as a party becomes relevant, therefore, it would be inappropriate for the Board to determine at this stage. Further, the Board stated Petitioner did not explain why authorization from the Board is required to file a separate petition against Patent Owner and the request for pre-approval of joinder is premature. Because of those reasons and because the Board did not authorize a motion regarding those subjects, that part of Petitioner’s Motion was dismissed.

Regarding elimination of Apple as part of the suit, the Board noted that Apple may remove itself from the proceeding by either requesting entry of adverse judgment against itself or by settling with Patent Owner and filing a joint motion to terminate the proceedings, but neither option suited Apple. Apple simply wanted to have its own representation and to not have to speak with the same voice as the other members of Petitioner. The Board stated that it was not reasonable for Apple to have expected that each of the five constituent members of Petitioner would be entitled to take different positions because Apple chose to be joined with the four partners with respect to filing a single petition. Further, Petitioner stated that it expected the position of Apple to be consistent with the other four members throughout the proceeding so any problem is speculative and therefore any action would be premature. The Board therefore denied the request to reconstitute Petitioner by excluding Apple.

Fandango, LLC, Opentable, Inc., Apple Inc., Domino’s Pizza, Inc., and Domino’s Pizza, LLC v. Ameranth, Inc., CBM2014-00013
Paper 22: Decision on Motion to Reconstitute Petitioner
Dated: March 24, 2014
Patent 6,982,733
Before: Jameson Lee, Meredith C. Petravick, Richard E. Rice, and Stacey G. White
Written by: Lee