`571-272-7822
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` Paper 16
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`Entered: November 7, 2014
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`THE UNITED STATES POSTAL SERVICE (USPS) AND
`THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL,
`Petitioner,
`
`v.
`
`RETURN MAIL, INC.,
`Patent Owner.
`_______________
`
`CBM2014-00116
`Patent 6,826,548 B2
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`An initial conference call in inter partes review CBM2014-00116
`occurred on November 6, 2014. Respective counsel for Petitioner and Patent
`Owner and Judges Turner, Benoit, and Kokoski were in attendance. Petitioner
`also indicated that it had a court reporter on the conference call. The purpose of
`the call was to discuss proposed changes, if any, to the Scheduling Order (Paper
`12) and any motions that the parties intend to file.
`The parties indicated that no protective orders for this proceeding are
`contemplated, although there was a protective order in the underlying litigation,
`which has been stayed. The parties also indicated that no settlement discussions
`had occurred, other than during the litigation, and that neither had initial
`disclosures, or any additional discovery requests, at this time. The parties are
`reminded that prior authorization is required for all motions filed with the
`Board.
`Patent Owner indicated that no decision on whether to seek to file a
`motion to amend had been made. The Board directs the attention of the parties
`to Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper Nos. 27
`and 68; Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper Nos.
`26 and 66; and ZTE Corporation and ZTE (USA) Inc. v. Contentguard
`Holdings, Inc., IPR2013-00136, Paper No. 33, which discuss the requirements
`of a motion to amend claims. If the Patent Owner decides to file a motion to
`amend claims, it must initiate a conference call with the Board prior to such
`filing, to confer about the intended motion.
`We noted the filing of Patent Owner’s Notice of Objections to
`Petitioner’s Evidence (Paper 14) and Petitioner’s Request for Rehearing (Paper
`
`2
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`15) in the instant proceeding. Petitioner inquired about the propriety of the
`filing of Patent Owner’s Notice, given that 37 C.F.R. 42.64(b)(1) requires that
`any objection to evidence during a preliminary proceeding must be served
`within ten business days of the institution of trial, but does not contemplate that
`such an objection may be filed, without authorization. Based on discussions
`during the conference call, Petitioner requested that Patent Owner’s Notice of
`Objections to Petitioner’s Evidence (Paper 14) be expunged and Patent Owner
`did not object. As such, we expunge the paper filed without authorization.
`It is
`ORDERED that Patent Owner’s Notice of Objections to Petitioner’s
`Evidence (Paper 14) be expunged; and
`ORDERED that Petitioner will file a copy the transcript of the
`conference call by the court reporter with the Board when completed.
`
`
`
`
`
`
`3
`
`
`
`CBM2014-00116
`Patent 6,826,548 B2
`
`
`
`PETITIONER:
`Lionel Lavenue
`Erika Arner
`Elizabeth Ferrill
`Joshua Goldberg
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`lionel.lavenue@finnegan.com
`erika.arner@finnegan.com
`elizabeth.ferrill@finnegan.com
` joshua.goldberg@finnegan.com
`USPS-RMI-CBM@finnegan.com
`
`
`PATENT OWNER:
`Douglas H. Elliot
`Eric M. Adams
`The Elliott Law Firm, PLLC
`delliott@elliottiplaw.com
`eric@elliottiplaw.com
`
`
`
`
`4
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