`Tel: 571-272-7822
`
`
`
`
`Paper 11
`Entered: September 24, 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 II LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00418
`Patent 5,500,819
`_______________
`
`
`
`Before KEVIN F. TURNER, 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
`
`
`
`
`
`
`
`
`
`IPR2014-00418
`Patent 5,500,819
`
`
`An initial conference call in the above proceeding was held on September 8,
`
`2014, between respective counsel for Petitioner and Patent Owner, and the Board.
`
`The purpose of the call was to discuss any proposed changes to the Scheduling
`
`Order (Paper 8) and any motions that the parties intend to file. Petitioner filed a
`
`statement (Paper 10) that it does not anticipate filing any motions beyond those set
`
`forth in the Scheduling Order. Patent Owner filed a statement (Paper 9) that it
`
`might file a motion to amend the claims.
`
`Patent Owner indicated that it might file a motion to amend. Patent Owner
`
`is reminded that, should it decide to do so, it must confer with the Board in a
`
`conference call before filing the motion. See 37 C.F.R. § 42.121(a); see, e.g, ZTE
`
`Corporation and ZTE (USA) Inc. v. Contentguard Holdings, Inc., IPR2013-00136,
`
`Paper 33 (PTAB November 7, 2013). One of the purposes of the conference
`
`requirement is for the Board to give guidance on the requirements of a motion to
`
`amend. Therefore, Patent Owner should leave sufficient time before any such
`
`motion to amend is filed so that changes can be made, if needed.
`
`The parties indicated that there were no adjustments to the due dates of the
`
`Scheduling Order. Should the parties stipulate to dates that differ from the
`
`Scheduling Order, the parties must provide prompt notice of the stipulation,
`
`specifically identifying any changed due dates. In addition, the parties indicated
`
`that they have not discussed settlement.
`
`Counsel for Patent Owner requested clarification regarding the grounds upon
`
`which inter partes review is instituted. Per our Order (Paper 7 at 19), inter partes
`
`review is instituted as to claims 1–11 and 17–19 on the ground that the claims are
`
`unpatentable under 35 U.S.C. § 103(a) as rendered obvious by the combination of
`
`Ogawa ’577, Ogawa ’045, and JP ’832.
`
` 2
`
`
`
`
`
`
`
`
`
`IPR2014-00418
`Patent 5,500,819
`
`
`PETITIONER:
`
`Gianni Minutolli
`Gianni.minutoli@dlapiper.com
`
`Kevin Hamilton
`Kevin.hamilton@dlapiper.com
`
`
`
`PATENT OWNER:
`
`Lori Gordon
`Lgordon-PTAB@skgf.com
`
`Michael Specht
`Mspecht-PTAB@skgf.com
`
`Omar Amin
`Oamin-PTAB@skgf.com
`
`
` 3
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