Paper 31
`Date: March 5, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)1
`____________
`
`Before MICHAEL KIM, PATRICK R. SCANLON, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A call was held on March 4, 2015, among respective counsel for Petitioner
`and Patent Owner and Judges Kim, Scanlon, and Kalan. On February 27, 2015,
`Petitioner and Patent Owner jointly requested a conference call with the Board to
`
`
`1 This Order addresses overlapping issues in these cases. Therefore, we issue one
`order applicable to both cases. The parties are not authorized to use this style
`heading in subsequent papers.
`
`
`Date: March 5, 2015
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)1
`____________
`
`Before MICHAEL KIM, PATRICK R. SCANLON, and
`KRISTINA M. KALAN, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A call was held on March 4, 2015, among respective counsel for Petitioner
`and Patent Owner and Judges Kim, Scanlon, and Kalan. On February 27, 2015,
`Petitioner and Patent Owner jointly requested a conference call with the Board to
`
`
`1 This Order addresses overlapping issues in these cases. Therefore, we issue one
`order applicable to both cases. The parties are not authorized to use this style
`heading in subsequent papers.
`
`
`
`
`
`
`
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)
`
`discuss matters related to scheduling cross-examination of Dr. Sumit Roy,
`Petitioner’s expert declarant in IPR2014-00501 and IPR2014-00504. According to
`the parties, Dr. Roy is currently on an assignment teaching at the University of
`Canterbury, Christchurch, New Zealand. The parties represent that Dr. Roy left for
`his assignment in New Zealand on February 18, 2015, and will return to the United
`States on April 6, 2015.
`Petitioner’s Replies in IPR2014-00501 and IPR2014-00504 were filed on
`February 9, 2015, along with a Second Declaration of Sumit Roy, Ph.D. IPR2014-
`00501, Paper 28, Ex. 1019; IPR2014-00504, Paper 26, Ex. 1012.
`The present Scheduling Orders (IPR2014-00501, Paper 14; IPR2014-00504,
`Paper 13) set out the following relevant due dates:
`DUE DATE 4 ......................................................................... March 23, 2015
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 ............................................................................. April 6, 2015
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 ........................................................................... April 13, 2015
`Reply to opposition to motion to exclude
`DUE DATE 7 .............................................................................. May 5, 2015
`Oral argument (if requested)
`During the call, the parties represented that they have discussed, but have
`not been able to agree upon, possible accommodations for Dr. Roy to be cross-
`examined prior to Due Date 4, i.e., March 23, 2015. Patent Owner represented that
`the parties had discussed a number of options, including (1) having Petitioner fly
`
`2
`
`
`
`
`
`
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)
`
`
`Dr. Roy back to the United States for a live deposition during the normal window
`of time; (2) conducting the deposition in New Zealand, with Board permission; and
`(3) moving Due Dates 4–6 or Due Dates 4–7 to allow for a deposition of Mr. Roy
`upon his return to the United States. Petitioner indicated that Options 1 and 2 were
`impractical, but was amenable to Option 3. The parties proposed a number of
`potential amended dates for the relevant Due Dates in the Scheduling Orders.
`Petitioner represented that Mr. Roy could be made available as early as April 8,
`2015.
`
`As discussed during the phone call, Due Date 4 is moved to April 21, 2015,
`Due Date 5 is moved to April 24, 2015, and Due Date 6 is moved to April 28,
`2015. Due Date 7, the date of oral argument (if requested), remains unchanged and
`will take place on May 5, 2015. We note that the parties are free to file any paper,
`including the request for oral argument, in advance of their respective due dates.
`Accordingly, it is
`ORDERED that the Scheduling Orders in these proceedings (IPR2014-
`00501, Paper 14; IPR2014-00504, Paper 13) are hereby amended as follows:
`DUE DATE 4 ......................................................................... April 21, 2015
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`DUE DATE 5 ........................................................................... April 24, 2015
`Response to observation
`Opposition to motion to exclude
`DUE DATE 6 ........................................................................... April 28, 2015
`Reply to opposition to motion to exclude
`
`3
`
`
`
`
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)
`
`
`
`
`
`FURTHER ORDERED that Due Date 7 remains unchanged, and oral
`argument (if requested) will take place on May 5, 2015.
`
`
`
`
`4
`
`
`
`
`
`
`IPR2014-00501 (Patent 7,136,392 B2)
`IPR2014-00504 (Patent 7,382,771 B2)
`
`For Petitioner:
`
`Theodore Brown
`tbrown@kilpatricktownsend.com
`
`Christopher Schenck
`cschenck@kilpatricktownsend.com
`
`John Alemanni
`jalemanni@kilpatricktownsend.com
`
`
`For Patent Owner:
`
`Brenton Babcock
`2BRB@knobbe.com
`
`Ted Cannon
`2tmc@knobbe.com
`
`Donald Coulman
`dcoulman@intven.com
`
`
`
`
`
`5
`
`
`
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