Paper 21
`Entered: June 3, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTEL U.S. INC.
`and
`AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`Petitioner
`
`v.
`
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC
`Patent Owner
`____________
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Entered: June 3, 2014
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AUTEL U.S. INC.
`and
`AUTEL INTELLIGENT TECHNOLOGY CO. LTD.
`Petitioner
`
`v.
`
`BOSCH AUTOMOTIVE SERVICE SOLUTIONS LLC
`Patent Owner
`____________
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`____________
`
`Before JOSIAH C. COCKS, SHERIDAN K. SNEDDEN, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`
`INITIAL CONFERENCE SUMMARY
`The initial conference call for this proceeding was held on May 29,
`2014. Autel filed a list of potential motions (Paper 20); Bosch did not.
`1. Scheduling Order
`Neither party identified any concerns with the Scheduling Order or
`proposed any changes to it. The parties are reminded that, without obtaining
`prior authorization from the Board, they may stipulate to different dates for
`DATES 1-51 by filing an appropriate notice with the Board.
`2. Related Proceedings
`The parties confirmed that the related District Court action is currently
`stayed pending settlement discussions, but that no settlement had been
`reached. We reminded the parties to notify the Board of status changes of
`that proceeding, and whenever any new related proceedings are commenced.
`3. Protective Order
`We reminded the parties that a protective order does not exist in a
`case until approved by the Board. Where a motion to seal is filed by either
`party, the proposed protective order should be presented as an exhibit to the
`motion, not appended to the motion paper. The parties are encouraged to
`operate under the Board’s default protective order. See Default Protective
`Order, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, App. B
`(Aug. 14, 2012); 37 CFR § 42.55(a). If the parties choose to propose a
`protective order other than or departing from the default Standing Protective
`Order, Office Trial Practice Guide, 77 Fed. Reg. 48756, App. B (Aug. 14,
`2012), they must submit a joint, proposed protective order, accompanied by
`a red-lined version based on the default protective order in Appendix B to
`
`1 The parties may not stipulate to changes for any other DUE DATE.
`
`
`
`2
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`the Board’s Office Patent Trial Practice Guide. See id. at 48769.
`We explained that information subject to a protective order will
`become public if identified in a final written decision in this proceeding, and
`that a motion to expunge the information will not necessarily prevail over
`the public interest in maintaining a complete and understandable file history.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761.
`4. Discovery
`We encouraged the parties to reach agreement on discovery. The
`parties may request a conference call with the Board only if they cannot
`reach agreement.
`5. Motion to Amend
`We explained that a Motion to Amend must be filed by DUE DATE 1
`of the Scheduling Order (July 8, 2014). Bosch is reminded that, should it
`decide to file a motion to amend, it must confer with the Board before filing
`the motion, and the conference should take place at least two weeks before
`filing the motion to amend.
`We take this opportunity to remind the Patent Owner that a motion to
`amend must, in addition to obviating the grounds of unpatentability
`authorized in this proceeding, demonstrate the patentability of any proposed
`substitute claims over the prior art in general, and clearly identify where the
`corresponding written description support in the original disclosure can be
`found for each substitute claim. If the motion to amend includes a proposed
`substitution of claims beyond a one-for-one substitution, the motion must
`explain why more than a one-for-one substitution of claims is necessary.
`For further guidance regarding these requirements, Patent Owner is directed
`to several decisions concerning motions to amend, including Nichia
`
`
`
`3
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27 (June 3,
`2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No.
`26 (June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v.
`ContentGuard Holdings, IPR2013-00136, Paper 33 (November 7, 2013);
`and Invensense, Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper No.
`21, (January 9, 2014).
`6. Motion to Exclude
`We explained to the parties that motions to exclude evidence are
`extraordinary remedies and not always granted. We encouraged the parties
`to consider issues of admissibility of evidence, in light of the Board’s
`experience and diligence in applying appropriate weight to evidence, before
`filing any motion to exclude evidence.
`7. Settlement
`The parties stated that there is no immediate prospect of settlement
`that will affect the conduct of this proceeding.
`
`For PETITIONER:
`
`Robert G. McMorrow, Jr.
`Zhun Lu
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`robert.mcmorrow@novakdruce.com
`zhun.lu@novakdruce.com
`
`
`For PATENT OWNER:
`
`
`Timothy M. McCarthy
`John E. Berg
`CLARK HILL PLC
`tmccarthy@clarkhill.com
`jberg@clarkhill.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
