` Entered: January 21, 2014
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GAME SHOW NETWORK, LLC, and WORLDWINNER.COM, INC.
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`
`
`
`Case IPR2013-00289
`Patent 6,174,237
`_______________
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On January 16, 2014, a conference call was held between counsel for the
`respective parties and Judges Medley, Turner, and Wood.
`The purpose of the conference call was for Patent Owner to confer with the
`
`
`
`IPR2013-00289
`Patent 6,174,237
`
`Board prior to filing a motion to amend. 1
`For guidance on motions to amend, Patent Owner is directed to the Office
`Patent Trial Practice Guide motion to amend guidelines, along with the guidelines
`provided in Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper 27
`(June 3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2013-00027, Paper
`26 (June 11, 2013); and ZTE Corporation and ZTE (USA) Inc. v. Contentguard
`Holdings Inc., IPR2013-00136, Paper 33 (November 7, 2014).
`A discussion was had regarding whether Patent Owner may file a request for
`a reexamination or reissue of the involved patent during the trial. The Board
`directed attention to prior Board decisions which suggest that a Patent Owner may
`pursue new claims in another type of proceeding before the Office during the trial.
` For example, on page 6 of the Idle Free decision cited above, the Board explained:
`If a patent owner desires a complete remodeling of its claim structure
`according to a different strategy, it may do so in another type of
`proceeding before the Office. For instance, a patent owner may file a
`request for ex parte reexamination, relying on the Board’s conclusion
`of a petitioner’s having shown reasonable likelihood of success on
`certain alleged grounds of unpatentability as raising a substantial new
`question of unpatentability. In appropriate circumstance, it may also
`seek to file a reissue application.
`
`Upon such explanation, counsel for Patent Owner represented that Patent
`Owner may elect to file a request for reexamination of its involved patent instead
`of filing a motion to amend. If Patent Owner elects to do so, it must notify the
`
`1 37 C.F.R. § 42.121(a) provides that a patent owner may file one motion to amend,
`but only after conferring with the Board.
`2
`
`
`
`
`
`IPR2013-00289
`Patent 6,174,237
`
`Board. Counsel for Patent Owner indicated that it would do so in its Patent Owner
`Response. Upon further consideration, if Patent Owner files a request for
`reexamination or reissue, Patent Owner must file an updated mandatory notice with
`the Board. See 37 C.F.R. § 42.8(a)(3). To the extent that Patent Owner elects to
`file a motion to amend in this proceeding, the conference call satisfies Patent
`Owner’s requirement to confer with the Board prior to filing its motion to amend.
`
`
`
`PETITIONER:
`Brenton R. Babcock
`Ted M. Cannon
`Knobbe Martens Olson & Bear, LLP
`Brent.babock@knobbe.com
`Ted.cannon@knobbe.com
`boxgsn@knobbe.com
`
`
`PATENT OWNER:
`Daniel W. McDonald
`Robert A. Kalinsky
`Merchant & Gould, P.C.
`dmcdonald@merchantgould.com
`rkalinsky@merchantgould.com
`
`
`
`
`
`3
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