`Tel: 571-272-7822
`
`
`
`
`
`Paper 20
`Entered: October 29, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`VEEAM SOFTWARE CORPORATION
`Petitioner
`
`v.
`
`SYMANTEC CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
` Case IPR2013-00150 (Patent 7,093,086)1
`____________
`
`Before THOMAS L. GIANNETTI, SCOTT E. KAMHOLZ, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This paper addresses issues that are identical in the listed cases. We exercise our
`discretion to issue a single paper to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`At the request of counsel for Patent Owner, the Board held a telephone
`
`
`
`conference in these cases on October 28, 2013. The participants were counsel for
`
`the parties, including attorneys Gordon and Richetti, and Administrative Patent
`
`Judges Ward, Kamholz, and Giannetti.
`
`
`
`1. Motion to Amend
`
`
`
`Patent Owner intends to file a contingent motion to amend in each of the
`
`proceedings. Patent Owner is familiar with the requirements for such motions set
`
`forth in the Idle Free decision (Idle Free v. Bergstrom, IPR2012-00027, Paper 26),
`
`including the presumption of a one-for-one claim substitution. The motions will
`
`accompany the Patent Owner’s responses to the petitions.
`
`
`
`2. Motion to Compel
`
`
`
`In IPR2013-00150, Petitioner requested authorization to file a motion to
`
`compel deposition testimony from a non-party, VMware, Inc. The motion is
`
`necessitated, according to Petitioner, by the inability of the parties to reach
`
`agreement on the date by which a particular VMware software manual (Ex. 1005)
`
`being relied on by Petitioner became publicly accessible. The manual bears a
`
`copyright notice date of 2001, and is similar (but not identical) to another VMware
`
`manual (Ex. 1006) whose status as prior art is not challenged by Patent Owner.
`
`
`
`After discussing the matter with the parties, the Board authorized filing of
`
`the motion to compel. Petitioner was requested to address the applicable Garmin
`
`factors (see Garmin v. Cuozzo, IPR2012-00026, Paper 26), with special attention to
`
`2
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`factor 3, concerning ability to obtain the information without need of additional
`
`discovery. Petitioner’s motion should explain why the VMware manual (Ex. 1006)
`
`that is not challenged is not sufficient for its purposes.
`
`
`
`
`
`In view of the foregoing, it is hereby
`
`ORDERED that Patent Owner has complied with its duty under 37 C.F.R.
`
`§ 42.121 to confer with the Board before filing a motion to amend;
`
`
`
`FURTHER ORDERED that Petitioner is authorized to file a motion to
`
`compel the deposition of VMware for the limited purpose of proving whether
`
`Exhibit 1005 became accessible to the public prior to March 28, 2002, the earliest
`
`priority date relied on by Patent Owner;
`
`
`
`FURTHER ORDERED that the motion to compel will be filed no later than
`
`Friday, November 1, 2013; Patent Owner’s opposition no later than Friday,
`
`November 8, 2013; and that no reply is authorized at this time;
`
`
`
`FURTHER ORDERED that in addition to the other Garmin factors,
`
`Petitioner’s motion will address the question of why the other VMware manual
`
`(Ex. 1006) is not sufficient;
`
`
`
`FURTHER ORDERED that in its opposition to the motion, Patent Owner
`
`will specifically set forth the respects in which the proffered evidence of public
`
`accessibility of the challenged manual (Ex. 1005) is insufficient;
`
`
`
`FURTHER ORDERED that after these briefs have been exchanged, and by
`
`no later than November 15, 2013, the parties shall meet and confer (in person or by
`
`telephone) in a good faith attempt to resolve this issue without the need for
`
`3
`
`
`
`
`Case IPR2013-00141 (Patent 6,931,558)
`Case IPR2013-00142 (Patent 6,931,558)
`Case IPR2013-00143 (Patent 7,191,299)
`Case IPR2013-00150 (Patent 7,093,086)
`
`
`
`additional discovery, and shall advise the Board promptly, in a joint email, of the
`
`result.
`
`
`
`For PETITIONER:
`
`Lori A. Gordon
`Michael Q. Lee
`Byron L. Pickard
`STERNE, KESSLER, GOLDSTEIN
`& FOX PLLC
`lgordon-PTAB@skgf.com
`mlee-PTAB@skgf.com
`bpickard-ptab@skgf.com
`
`For PATENT OWNER:
`
`Joseph J. Richetti
`Lawrence G. Kurland
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`lgkurland@bryancave.com
`
`
`4
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
