`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
` Paper 34
`
`
`
`
` Entered: November 22, 2013
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW
`UNIVERSITY OF JERUSALEM
`Patent Owner
`_______________
`
`Cases IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)1
`_______________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 IPR2013-00326 has been joined with IPR2013-00218, and IPR2013-00327 has
`been joined with IPR2013-00219. This order addresses a single issue raised in
`both cases. We exercise discretion to issue one order to be filed in each case.
`The parties, however, are not authorized to use this style heading in subsequent
`papers
`
`
`
`Case IPR2013-00219
`Patent 7,477,284 B2
`
`
`
`
`On November 20, 2013, a conference call for this proceeding was held
`
`between respective counsel for the parties and Judges Medley, Easthom, and
`
`Arpin. Petitioner requested this conference call to renew its request, first raised
`
`during the initial conference call on October 23, 2013, for authorization to submit a
`
`motion for supplemental information pursuant to 37 C.F.R. § 42.123(a)(1). The
`
`supplemental information would consist of a supplemental declaration of Prof.
`
`Kenichi Okada. As Petitioner previously explained, one of Petitioner’s witnesses,
`
`Dr. Kouichi Matsuda, may not be available for cross-examination. Order, Paper
`
`29, at 3. Due to that uncertainty, Petitioner seeks to submit testimony from Prof.
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`Kenichi Okada to provide similar testimony to that of Dr. Matsuda as to the public
`
`accessibility of Kawakita. Id.
`
`The Board previously denied the request as premature in view of Patent
`
`Owner’s position that it may not challenge the public accessibility of the Kawakita
`
`in its patent owner response. See id. During this conference call, Patent Owner
`
`confirmed that it will not contest the public accessibility of Kawakita in this
`
`proceeding or in the related proceeding, IPR2013-00218. Consequently, Petitioner
`
`and Patent Owner agreed that it will not be necessary to depose or cross-examine
`
`Petitioner’s witnesses, including Prof. Kenichi Okada and Dr. Kouichi Matsuda,
`
`regarding the public accessibility of Kawakita.
`
`Accordingly, it is hereby:
`
`ORDERED that Petitioner’s request for authorization to submit a motion for
`
`supplemental information is denied.
`
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2013-00219
`Patent 7,477,284 B2
`
`FOR PETITONER:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`whanley@kenyon.com
`mccarniaux@kenyon.com
`
`FOR PATENT OWNER:
`
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`
`
`
`
`3
`
`
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