`571-272-7822
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` Paper No. 27
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`Entered March 6, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GARMIN INTERNATIONAL, INC. ET AL.
`Petitioner
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`v.
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`CUOZZO SPEED TECHNOLOGIES LLC
`Patent Owner
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`Case IPR-2012-00001
`Patent 6,778,074
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`Before JAMESON LEE, MICHAEL P. TIERNEY, and JOSIAH C. COCKS,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`A conference call was held on March 4, 2013, between Judges Lee, Tierney,
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`and Cocks and respective counsel for the parties. Cuozzo initiated the conference
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`call to confer about its intent to file a motion to amend claims under 37 C.F.R.
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`§ 42.121. Counsel for Cuozzo inquired about (1) whether Cuozzo’s motion to
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`amend should provide a general listing of all claims in its patent including claims
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`which are not under review, (2) whether Cuozzo should file one paper inclusive of
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`Case IPR 2012-00001
`Patent 6,778,074
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`the patent owner’s response and the motion to amend claims, (3) the form for
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`proposing more than one substitute claim per claim under review, and (4) what
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`actions petitioners are permitted to take in opposing a patent owner’s proposed
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`amendment.
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`The judges indicated (1) that a motion to amend claims should not list claims
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`which are not involved in this review, (2) that Cuozzo should file separate papers,
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`one which is the patent owner’s response, and another which is its motion to
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`amend claims, (3) that the motion to amend claims should make clear which is
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`“the” substitute claim for each claim under review, and if there are proposed
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`claims beyond those for a one-to-one substitution of original claims, then the
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`motion has to rebut the presumption that one-for-one replacement of claims is
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`sufficient (counsel for Cuozzo was further informed that simply saying that having
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`additional claims increases the odds of having a surviving claim at the end of
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`review would likely not rebut the presumption), (4) that in opposing Cuozzo’s
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`motion to amend claims, Garmin may argue unpatentability over prior art of the
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`proposed substitute claims and submit evidence to support the argument.
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`It is
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`ORDERED that Cuozzo should note the above guidance in filing its motion
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`to amend claims under 37 C.F.R. § 41.121(a); and
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`FURTHER ORDERED that Cuozzo is encouraged, for each proposed
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`substitute claim that bears a strong resemblance to an original claim under review,
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`to identify that original claim and make clear what are the relative changes with
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`respect to the original claim, e.g., denoting text deleted by one notation such as
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`bracketing and text inserted by another notation such as underlining.
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`-2-
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`-3-
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`Case IPR 2012-00001
`Patent 6,778,074
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`For PETITIONER
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`Jennifer C. Bailey
`Scott Brown
`HOVEY WILLIAMS LLP
`jcb@hoveywilliams.com
`jcrawford@hoveywilliams.com
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`
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`For PATENT OWNER
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`John R. Kasha
`Kelley Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`Kasha Law LLC
`kelley.kasha@kashalaw.com
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