`Trials@uspto.gov
`571-272-7822 Entered: 18 November 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ORACLE CORPORATION,
`ORACLE OTC SUBSIDIARY LLC,
`INGENIO LLC, and
`YELLOWPAGES.COM LLC
`Petitioners
`
`v.
`
`CLICK-TO-CALL TECHNOLOGIES LP
`Patent Owner
`____________
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`
`
`Before MICHAEL R. ZECHER, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`
`An initial conference call in the above proceeding was held on
`
`November 14, 2013, between respective counsel for Petitioners and Patent
`
`Owner, and Judges Zecher, Giannetti, and Ward. The purpose of the call
`
`was to discuss any proposed changes to the Scheduling Order (Paper 27) and
`
`any motions that the parties intend to file. Prior to the call, the parties filed a
`
`list of proposed motions. Papers 34 and 35. The following issues were
`
`discussed.
`
`
`
`The parties indicated that they do not have any issues with the
`
`Issue No. 1—Schedule
`
`Scheduling Order.
`
`Issue No. 2—Motion to File Supplemental Information
`
`
`
`Petitioners requested authorization to file a motion to submit
`
`supplemental information pursuant to 37 C.F.R. § 42.123. Paper 34 at 1.
`
`Petitioners indicated that they seek to file a new expert declaration to explain
`
`certain textual portions of the Freeman reference. The declaration would
`
`refer to certain textual portions of Freeman cited in the petition as teaching
`
`the claimed connecting two telephone calls, as well certain textual portions
`
`of Freeman not cited in the petition that allegedly disclose a conference
`
`bridge for connecting multiple users of an on-line gaming application. The
`
`Board reminded Petitioners that, in its decision to institute, the proposed
`
`grounds of unpatentability based in part on Freeman were denied. Paper 26
`
`at 23-29. The Petitioner has requested rehearing of this issue. Paper 36.
`
`The Board denied Petitioners’s request for authorization to submit
`
`supplemental information, noting that the grounds of unpatentability based
`
`in part on Freeman are no longer part of this proceeding. Petitioners may
`
`
`
`
`
`2
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
` renew their request for authorization to submit supplement information if
`
`their request for rehearing is granted.
`
`Issue No. 3—Motion for Additional Discovery
`
`
`
`Patent Owner requested authorization to file a motion for additional
`
`discovery pursuant to 37 C.F.R. § 42.51(b)(2). Paper 35 at 1. Patent Owner
`
`indicated that it seeks discovery regarding the issue of privity between
`
`Petitioners, specifically within the context of 35 U.S.C. § 315(b), for the
`
`purpose of developing a record for appeal to the Federal Circuit. The Board
`
`reminded Patent Owner that, in its decision to institute, it concluded that
`
`Petitioners—namely Ingenio LLC—are not barred from pursuing an inter
`
`partes review pursuant to § 315(b). Paper 26 at 15-18. Patent Owner has
`
`requested rehearing of this issue. Paper 37. The Board denied Petitioners’s
`
`request for authorization to seek additional discovery, noting that the privity
`
`issue already has been decided and, therefore, is no longer part of this
`
`proceeding. Patent Owner may renew its request for authorization to file a
`
`motion for additional discovery if its request for rehearing is granted.
`
`
`
`
`
`In consideration of the foregoing, it is:
`
`ORDERED that Petitioners’s request for authorization to file a motion
`
`to submit supplemental information pursuant to 37 C.F.R. § 42.123 is
`
`denied; and
`
`
`
`FURTHER ORDERED that Patent Owner‘s request for authorization
`
`to file a motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2)
`
`is denied.
`
`
`
`
`
`3
`
`
`
`Case IPR2013-00312
`U.S. Patent No. 5,818,836
`
`For PETITIONERS:
`
`James M. Heintz
`DLA Piper LLP (US)
`Oracle-IPRP@dlapiper.com
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`mstockwell@kilpatricktownsend.com
`
`For PATENT OWNER:
`
`Peter J. Ayers
`LEE & HAYES, PLLC
`peter@leehayes.com
`
`Craig J. Yudell
`Yudell Isidore Ng Russell PLLC
`Yudell@yudellisidore.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
