`571-272-7822
`
`
`
`
`
`
`Paper 20
`Entered: May 10, 2013
`
`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 (SCM)
`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 May 7, 2013, Xilinx filed a paper styled “PATENT OWNER’S
`
`FIRST MOTION TO AMEND BY XILINX UNDER 37 C.F.R. § 42.121.”
`
`Paper 19; “Motion to Amend.” The Motion to Amend fails to comply with
`
`
`
`Case IPR2012-00018
`Patent 7,566,960
`
`the rules and procedures governing inter partes reviews. As such,
`
`Administrative Patent Judges Medley, Arbes, and Easthom held a
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`conference call on May 9, 2013, involving counsel for IVM and counsel for
`
`Xilinx, to explain the Motion to Amend defects and to provide Xilinx an
`
`opportunity to refile a substitute motion to amend.
`
`
`
`A motion to amend claims must include a claim listing. 37 C.F.R.
`
`§ 42.121(b). The rule contemplates that the claim listing be a part of the
`
`motion to amend, and not filed as a separate paper. Thus, the listing of
`
`claims is included in the 15 page limit set forth per 37 C.F.R. § 42.24
`
`(a)(1)(v) for motions.
`
`
`
`Xilinx’s Motion to Amend does not include a claim listing. Rather,
`
`Xilinx filed the claim listing as an exhibit. Ex. 2009. However, by doing so,
`
`Xilinx circumvented the motion page limit. The Motion to Amend is
`
`dismissed without prejudice to refile a “Substitute Patent Owner’s Motion to
`
`Amend.” The Board recognizes that by including the 13 substitute claims as
`
`part of the substitute motion to amend, Xilinx will exceed the 15 page limit.
`
`Based on the facts of this case, and due to the number of substitute claims,
`
`Xilinx’s request for a five page extension for its substitute motion to amend
`
`is granted. In addition, and as explained, the substitute motion to amend
`
`must indicate that the motion to amend is contingent upon a Board
`
`determination that the original patent claims 1-13 are unpatentable. Xilinx is
`
`not authorized to make any other changes to the substitute motion without
`
`Board authorization.
`
`
`
`Lastly, counsel for IVM inquired whether it need file a motion to file
`
`supplemental information if IVM relies on “new evidence” in support of any
`
`opposition it files to Xilinx’s motion to amend. Petitioners may respond to
`
`
`
`2
`
`
`
`Case IPR2012-00018
`Patent 7,566,960
`
`new issues arising from proposed substitute claims including evidence
`
`responsive to the amendment. This includes the submission of new expert
`
`declarations that are directed to the proposed substitute claims. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (August 14, 2012).
`
`Thus, IVM need not file a separate motion to file supplemental evidence,
`
`provided that the evidence in support of IVM’s opposition is relied upon to
`
`respond to new issues arising from the proposed substitute claims.
`
`
`
`
`
`It is
`
`ORDERED that “PATENT OWNER’S FIRST MOTION TO
`
`AMEND BY XILINX UNDER 37 C.F.R. 42.121” (Paper 19) is dismissed
`
`without prejudice for Xilinx to file a “Substitute Motion to Amend” in
`
`compliance with this order; and
`
`
`
`FURTHER ORDERED that the substitute motion to amend is due
`
`by May 15, 2013.
`
`
`
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`
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`
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`
`3
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`
`
`Case IPR2012-00018
`Patent 7,566,960
`
`Via electronic transmission:
`
`PETITIONER:
`
`Michael D. Specht
`Robert G. Sterne
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht@skgf.com
`rsterne@skgf.com
`
`PATENT OWNER:
`
`David L. McCombs
`Thomas B. King
`HAYNES AND BOONE, LLP
`David.mccombs@haynesboone.com
`Thomas.king@haynesboone.com
`
`
`
`
`4
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`
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