`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: June 2, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOSHIBA CORPORATION, TOSHIBA AMERICA, INC.,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`and TOSHIBA AMERICA INFORMATION SYSTEMS, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`_______________
`
`Case IPR2014-00113
`Patent 6,058,045
`_______________
`
`
`Before TREVOR M. JEFFERSON and DAVID C. McKONE, Administrative
`Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2014-00113
`Patent 6,058,045
`
`
`An initial conference call in the above proceeding was held on May 22,
`2014, between respective counsel for Petitioner and Patent Owner, and Judges
`Jefferson and McKone. The purpose of the call was to discuss any proposed
`changes to the Scheduling Order (Paper 14) and any motions that the parties intend
`to file. Neither party filed a proposed motions list.
`The parties indicated that there were no adjustments of Due Dates 1-3 and
`that any future agreed-to changes would be relayed to the Board. The Board
`indicated that changes to Due Dates beyond Due Date 3 would need
`communication with and approval by the Board.
`The parties also acknowledged that no protective orders are presently in
`place, that there are no initial disclosures, and that no additional discovery requests
`are being made at this time. The parties confirmed that no settlement discussions
`have occurred with respect to this proceeding.
`Counsel for Patent Owner indicated that Patent Owner did not intend to file
`a motion to amend. If the Patent Owner decides to file a motion to amend claims,
`it must initiate a conference call with the Board prior to such filing to confer about
`the intended motion. The Board directs the attention of the parties to Nichia
`Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27, Idle Free
`Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper Nos. 26 and 66, and ZTE
`Corporation and ZTE (USA) Inc. v. Contentguard Holdings, Inc., IPR2013-00136,
`Paper No. 33, which discuss the requirements of a motion to amend claims. We
`recommend requesting such a conference at least two weeks prior to filing a
`motion to amend.
`The Board reminded the parties that, unless otherwise stated in the rules,
`prior authorization is required for all motions. See 37 C.F.R. § 42.20(b). The
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00113
`Patent 6,058,045
`
`Board is available for additional conference calls should the need arise due to
`issues that the parties are not able to resolve on their own.
`
`
`Order
`
`It is
`ORDERED that all due dates set in the Scheduling Order dated May 5, 2014
`(Paper 14), remain unchanged.
`
`
`PETITIONER:
`Alan A. Limbach
`Gerald T. Sekimura
`DLA PIPER LLP (US)
`alan.limbach@dlapiper.com
`gerald.sekimura@dlapiper.com
`
`PATENT OWNER:
`
`Robert Greene Sterne
`Jon E. Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
` 3
`
`
`
`
`
`