Trials@uspto.gov Paper No. 10 Paper No. 22
`
`571-272-7822
`Date Entered: April 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`____________
`
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`Date Entered: April 24, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.
`Petitioner
`
`v.
`
`PI-NET INTERNATIONAL, INC.
`Patent Owner
`____________
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`____________
`
`
`
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON, and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`
`
`An initial conference in CBM2014-00018, which involves U.S. Patent
`
`8,037,158 (the ’158 Patent), was conducted on April 7, 2014. SAP America, Inc.
`
`(“Petitioner”) was represented by Michael Lee and Lori Gordon. PI-NET
`
`International, Inc. (“Patent Owner”) was represented by Tam Pham. The following
`
`subjects were discussed during the conference:
`
`Scheduling Order
`
`Both parties confirmed that they seek no changes to the current Scheduling
`
`Order. The parties are reminded that, without obtaining prior authorization from
`
`the Board, they may stipulate to different dates for DATES 1-3, as provided in the
`
`Scheduling Order, by filing an appropriate notice with the Board. The parties may
`
`not stipulate to any other changes to the Scheduling Order.
`
`Protective Order
`
`Patent Owner’s List of Anticipated Motions, Paper 20, filed before the initial
`
`conference, states that Patent Owner seeks authorization to file a motion for
`
`protective order should the standing default protective order not govern the
`
`exchange and submission of confidential information. Entry of the standing
`
`protective order is not automatic and no protective order has been entered in this
`
`proceeding. The parties are reminded of the requirement for a protective order
`
`when filing a motion to seal. 37 C.F.R. § 42.54. Authorization to file a Motion for
`
`Protective Order is granted. If the parties have agreed to a protective order,
`
`including the default Standing Protective Order, Office Trial Practice Guide, 77
`
`Fed. Reg. 48756, App. B (Aug. 14, 2012), they should file a signed copy of the
`
`proposed protective order with the motion to seal. If the parties propose a
`
`protective order departing from the default protective order, they must submit a
`
`joint, proposed protective order, accompanied by a red-lined version based on the
`
`
`
`2
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`default protective order in Appendix B to the Board’s Office Patent Trial Practice
`
`Guide. See, id. at 48769.
`
`Initial Disclosures and Discovery
`
`The parties have not stipulated to any initial disclosures at this time. The
`
`parties are reminded of the discovery provisions of 37 C.F.R. § 42.51-52 and
`
`Office Trial Practice Guide. See 77 Fed. Reg. at 48761-2. Discovery requests and
`
`objections are not to be filed with the Board without prior authorization. If the
`
`parties are unable to resolve discovery issues between them, the parties may
`
`request a conference with the Board. A motion to exclude, which does not require
`
`Board authorization, must be filed to preserve any objection. See, 37 C.F.R. §
`
`37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48767. There are no discovery
`
`issues pending at this time.
`
`The parties are reminded of the provisions for taking testimony found at 37
`
`C.F.R. § 42.53 and the Office Trial Practice Guide at 77 Fed. Reg. at 48772,
`
`App. D.
`
`Motions
`
`Prior to the initial conference, Patent Owner filed a list of potential motions,
`
`including a motion to stay certain related other proceedings. The parties indicated
`
`that, at this time, there are currently no motions to be addressed.
`
`The parties are reminded that, except as otherwise provided in the Rules,
`
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
`
`party seeking to file a motion should request a conference to obtain authorization
`
`to file the motion. The parties are not authorized to file any motions in this
`
`proceeding at this time.
`
` Although Board authorization is not required for the Patent Owner to file
`
`one motion to amend the patent by cancelling or substituting claims, we remind
`
`
`
`3
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`Patent Owner of the requirement to request a conference with the Board before
`
`filing a motion to amend. 37 C.F.R. § 42. 121(a). The conference should take
`
`place at least two weeks before filing the motion to amend. The Board takes this
`
`opportunity to remind the Patent Owner that a motion to amend must explain in
`
`detail how any proposed substitute claim obviates the grounds of unpatentability
`
`authorized in this proceeding, and clearly identify where the corresponding written
`
`description support in the original disclosure can be found for each claim added. If
`
`the motion to amend includes a proposed substitution of claims beyond a one-for-
`
`one substitution, the motion must explain why more than a one-for-one substitution
`
`of claims is necessary. For further guidance regarding these requirements, Patent
`
`Owner is directed to several decisions concerning motions to amend, including
`
`Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27 (June 3,
`
`2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 (June
`
`11, 2013), Paper 66 (January 7, 2014); ZTE Corp. v. ContentGuard Holdings,
`
`IPR2013-00136, Paper 33 (November 7, 2013); Invensense, Inc. v.
`
`STMicroelectronics, Inc., IPR2013-00241, Paper 21, (January 9, 2014); and Toyota
`
`Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00423, Paper 27
`
`(March 7, 2014).
`
`Settlement
`
`The parties stated that there are no immediate prospects of settlement that
`
`will affect this proceeding.
`
`4
`
`
`
`
`
`
`
`Case CBM2014-00018
`Patent 8,037,158 B2
`
`
`PETITIONER: (via electronic transmission)
`
`
`Michael Q. Lee
`Mlee-PTAB@skgf.com
`
`Lori A. Gordon
`Lgordon-PTAB@skgf.vom
`
`PATENT OWNER: (via electronic transmission)
`
`
`Tam Thanh Pham
`tpham@lrrlaw.com
`
`Lauren May Eaton
`Pi-Net_PTAB@lrrlaw.com
`
`5
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