`Entered: March 18, 2013
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTELLECTUAL VENTURES MANAGEMENT, LLC
`Petitioner
`
`v.
`
`XILINX, INC.
`Patent Owner
`____________
`
`Case IPR2012-00018
`Patent 7,566,960
`____________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On March 12, 2013, the following individuals participated in the
`
`
`
`Case IPR2012-00018
`Patent 7,566,960
`
`initial conference call:1
`(1) Mr. Michael Specht and Mr. Robert Sterne, counsel for IVM;
`(2) Mr. David McCombs and Mr. Thomas King, counsel for Xilinx;
`
`and
`
`(3) Sally Medley, Justin Arbes, and Karl Easthom, Administrative
`Patent Judges.
`In preparation for the initial call, patent owner Xilinx filed a motions
`list. Paper 15. During the call, and consistent with the list, counsel for
`Xilinx represented that Xilinx intends to file a motion to amend. The parties
`were directed to the Patent Trial Practice Guide for guidance on motions to
`amend. See, Office Patent Trial Practice Guide, 77 Fed. Reg. 48766-48767.
`More specifically, in any motion to amend Xilinx files, the motion
`must explain how the proposed substitute claims obviates the grounds of
`unpatentability authorized in this trial and clearly identify where
`corresponding written description support in the specification can be found.
`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. 37 C.F.R. § 42.121. In addition and
`in response to inquiry from counsel for IVM, the parties were directed to the
`Patent Trial Practice Guide that explains that petitioners may respond to new
`issues arising from proposed substitute claims including evidence responsive
`to the amendment. 77 Fed. Reg. 48766, 48767.
`IVM indicated that they do not seek authorization to file any motions
`
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`
`
`
`2
`
`
`
`Case IPR2012-00018
`Patent 7,566,960
`
`at this time.
`Counsel for the respective parties indicated that they have no issues
`with the Scheduling Order (Paper 14) entered on February 12, 2013. Lastly,
`the parties represented that they have no report regarding settlement.
`PETITIONER:
`
`Via electronic transmission:
`
`Michael D. Specht
`Robert G. Sterne
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005-3932
`
`PATENT OWNER:
`
`Via electronic transmission:
`
`David L. McCombs
`Thomas B. King
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`
`
`
`
`3
`
`
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