`571-272-7822
`
`
`
` Paper 17
`
`Entered: February 26, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LIBERTY MUTUAL INSURANCE CO.
`Petitioner,
`
`v.
`
`PROGRESSIVE CASUALTY INSURANCE CO.
`Patent Owner.
`____________
`
`Case CBM2012-00002 (JL)
`Patent 6,064,970
`____________
`
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On February 25, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Chang, and Zecher. The
`subject of discussion was what motions the parties intend to file.
`
`
`
`Case CBM2012-00002
`Patent 6,064,970
`
`First, the parties indicated a general desire to have a protective order
`put in place to cover disclosure of confidential information. Counsel for the
`parties agreed to work toward that end and to ask the Board for assistance if
`they need authorization to deviate from the default protective order in
`Appendix B to the Board’s Trial Practice Guide. See Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48769 (Aug. 14, 2012).
`Counsel for the petitioner identified two items with respect to which
`he would like to submit supplemental information under 37 C.F.R. § 42.223.
`The first is an infringement analysis by the patent owner. According to
`petitioner, that analysis conflicts with certain positions taken by the patent
`owner in the patent owner’s preliminary response. The second is a letter
`dated November 2011 from petitioner’s counsel to patent owner’s counsel.
`According to the petitioner, that letter rebuts certain arguments in the patent
`owner’s preliminary response. The panel informed petitioner’s counsel that
`filing of such supplemental information at this time is not authorized, but
`that if the patent owner maintains those arguments in the full patent owner’s
`response, the petitioner may submit the information in its reply.
`Finally, petitioner inquired about whether there is a minimum
`threshold for number of years of legal experience sufficient to qualify one as
`having substantial litigation experience to support a motion for pro hac vice
`admission. The panel replied that the totality of the circumstances including
`all pertinent factors must be considered to determine whether there is good
`cause pursuant to 37 C.F.R. § 42.10(c) for admission, and that no specific
`number of years represents a minimum threshold.
`
`2
`
`
`
`Case CBM2012-00002
`Patent 6,064,970
`
`Counsel for the patent owner indicated that the patent owner may seek
`to amend one or more claims. The panel informed counsel that all proposed
`amendments must reasonably reflect an effort to obviate or otherwise render
`moot one or more of petitioner’s arguments against an unamended claim.
`It is
`ORDERED that the petitioner is not authorized to file the
`supplemental information referred to in the conference call; and
`FURTHER ORDERED that the petitioner is authorized to file a
`motion for pro hac vice admission under 37 C.F.R. § 42.10(c), and that such
`a motion shall be filed in accordance with the “Order -- Authorizing Motion
`for Pro Hac Vice Admission” in Case IPR2013-00010 (MPT), a copy of
`which is available on the Board Web site (at http://www.uspto.gov/PTAB)
`under “Representative Orders, Decisions, and Notices”; the patent owner has
`one week from the time of filing of the motion to oppose the motion; and
`FURTHER ORDERED that the patent owner may file a motion to
`amend one or more of its claims which are subject to at least one ground of
`unpatentability for which this proceeding has been instituted.
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2012-00002
`Patent 6,064,970
`
`PETITIONER:
`
`J. Steven Baughman
`Nicole M. Jantzi
`Ropes & Gray
`Email: steven.baughman@ropesgray.com
`Email: nicole.jantzi@ropesgray.com
`
`
`PATENT OWNER:
`
`Calvin P. Griffith
`James L. Wamsley, III
`John V. Biernacki
`Jones Day
`Email: cpgriffith@jonesday.com
`Email: jlwamsleyiii@jonesday.com
`Email: jvbiernacki@jonesday.com
`
`
`4
`
`
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