`571-272-7822
`
`
` Paper No. 34
`Date Entered: September 5, 2014
`
`
`
`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.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`
`1. Introduction
`On September 4, 2014, a conference call was conducted between respective
`counsel for the parties and Judges Cocks, Snedden, and Daniels. Autel U.S. Inc.
`and Autel Intelligent Technology Co. Ltd. (“Petitioner”) was represented by
`counsel John Smith. Bosch Automotive Service Solutions LLC (“Patent Owner”)
`was represented by counsel Timothy McCarthy. Patent Owner requested the call
`to seek leave to file the following motion: Patent Owner’s Motion to Supplement
`the Declaration of Patrick Pierce and the Amended Motion to Seal.
`
`2. Discussion
`During the conference call, Patent Owner indicated that the original
`
`Declaration of Patrick Pierce filed July 11, 2014 (Ex. 2007) makes reference to a
`licensing agreement concerning U.S. Patent 6,904,796, which, at that time, was
`under negotiation. Patent Owner informed the panel that as of around August 13th
`or 14th, the licensing agreement had been finalized, and Patent Owner desired to
`update Mr. Pierce’s Declaration to indicate the current status of the noted licensing
`agreement, and to file a copy of the licensing agreement. Patent Owner also
`indicated that it seeks to supplement the Amended Motion to Seal (Paper 28) to
`request that certain provisions of the licensing agreement be maintained as
`confidential.
`
`Petitioner opposed Patent Owner’s request on the basis that the time to file
`its reply to Patent Owner’s Response is rapidly approaching (Due Date 2, currently
`September 12, 2014), and that the licensing agreement may be cumulative to
`information already of record, and thus of limited value to the panel. In response
`to the Petitioner’s comments on the call, Patent Owner indicated that it was
`
`
`
`2
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`amenable to stipulating to a revised Due Date 2, so as to afford Petitioner adequate
`time for any reply that it intends to file.
`
`After a brief conferral, the panel authorized Patent Owner to file its
`requested motion. The panel is mindful of the scheduling in this proceeding, and
`encourages the parties to work together to reach mutual agreement concerning any
`necessary changes to Due Date 2. The panel also indicated that it did not discern
`any prejudice to Petitioner in authorizing Patent Owner to file its motion, and can
`determine whether any content associated with that filing is cumulative.
`
`3. Order
`
`It is
`ORDERED that Patent Owner is authorized to file: Patent Owner’s Motion
`to Supplement the Declaration of Patrick Pierce and the Amended Motion to Seal.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2014-00183
`Patent 6,904,796 B2
`
`PETITIONER:
`
`John G. Smith
`Zhun Lu
`Novak Druce Connolly Bove + Quigg LLP
`Autel00183@dbr.com
`zhun.lu@novakdruce.com
`
`
`PATENT OWNER:
`
`
`Timothy M. McCarthy
`Clark Hill PLC
`tmccarthy@clarkhill.com
`
`John E. Berg
`Clark Hill PLC
`jberg@clarkhill.com
`
`
`
`
`
`4
`
`
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