Trials@uspto.gov Paper 8
`571-272-7822
`
`Entered: October 7, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURE AXCESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
` IPR2014-00749 (Patent 8,577,003 B2)1
`____________
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`INITIAL CONFERENCE CALL SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are identical in both cases. Therefore, we
`exercise our discretion to issue one order to be filed in both cases.
`
`
`571-272-7822
`
`Entered: October 7, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURE AXCESS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00493 (Patent 7,899,167 B1)
` IPR2014-00749 (Patent 8,577,003 B2)1
`____________
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`INITIAL CONFERENCE CALL SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are identical in both cases. Therefore, we
`exercise our discretion to issue one order to be filed in both cases.
`
`
`
`IPR2014-00493 (Patent 7,899,167 B1)
`IPR2014-00749 (Patent 8,577,003 B2)
`
`An initial conference call for the above-identified proceedings was
`held on October 6, 2014, between respective counsel for Petitioner and
`Patent Owner, and Judges Turner, Benoit, and Braden. The purpose of the
`call was to discuss any proposed changes to the Scheduling Order (Paper 92),
`as well as any motions that the parties intend to file. Neither party filed a list
`of proposed motions. The following was discussed.
`
`1. Schedule
`The Board indicated that the schedules for both proceedings had been
`coordinated and that oral argument, if requested, would be combined. The
`Board explained that the oral argument transcript would be useable across all
`proceedings.
`The Board inquired whether the parties had any issues with the
`Scheduling Order. The parties indicated they were working together to
`change some of DUE DATES 1 – 5 and would notify the Board of any
`changes. The parties did not have other issues with the Scheduling Order.
`
`2. Motions Practice
`The Board provided some general guidance about motions practice
`before the Board.
`
`
`2 For the purpose of clarity and expediency, IPR2014-00493 is
`representative and all citations are to IPR2014-00493 unless otherwise
`noted.
`
`2
`
`
`
`IPR2014-00493 (Patent 7,899,167 B1)
`IPR2014-00749 (Patent 8,577,003 B2)
`
`Motion to Amend
`Patent Owner indicated that it is still contemplating whether to file a
`motion to amend and indicated it was aware of the requirement to confer
`with the Board before filing a motion to amend. See 37 C.F.R. § 42.221(a).
`The Board also reminded Patent Owner that a motion to amend, if any,
`should be filed by DUE DATE 1.
`A motion to amend must explain in detail how any proposed
`substitute claim obviates the grounds of unpatentability authorized in this
`proceeding, and clearly identify where the corresponding written description
`support in the original disclosure can be found for each claim added. 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. 37 C.F.R. § 42.221. For further
`guidance regarding requirements concerning motions to amend, Patent
`Owner is directed to the following Board decisions and orders:
`(1) IPR2013-00124, Paper 12 (granting-in-part a motion to amend)
`(2) IPR2012-00027, Papers 26 and 66; and (3) IPR2013-00088, Paper 16;
`(4) IPR2013-00099, Paper 19; (5) IPR2013-00136, Paper 33; and
`(6) IPR2013-00347, Paper 20.
`Motion to Exclude Evidence
`The Board indicated the scope of a motion to exclude evidence was
`limited to arguments to exclude evidence believed to be inadmissible. The
`Board explained that arguments regarding the sufficiency or weight of
`evidence, or concerning an allegedly improper scope of a reply, would not
`be proper in a motion to exclude evidence. See Office Patent Trial Practice
`3
`
`
`
`IPR2014-00493 (Patent 7,899,167 B1)
`IPR2014-00749 (Patent 8,577,003 B2)
`
`Guide, 77 Fed. Reg. 48,765, 48,767 (Aug. 14, 2012). A motion to exclude
`evidence also must:
`(a) Identify where in the record the objection originally was
`made;
`(b) Identify where in the record the evidence sought to be
`excluded was relied upon by an opponent;
`(c) Address objections to exhibits in numerical order; and
`(d) Explain each objection.
`
`Id.
`Motion for Additional Discovery
`The Board explained that discovery is limited in an inter partes
`review and the standard for additional discovery is “necessary in the
`interests of justice.” The parties may agree to additional discovery between
`themselves. Where the parties fail to agree, a party may move for additional
`discovery. 37 C.F.R. § 42.51(b)(2)(i). Prior authorization for filing a
`motion for additional discovery is required. 37 C.F.R. § 42.20(b). For
`further guidance regarding factors considered in a motion for additional
`discovery, the parties are directed to the Board order authorizing motion for
`additional discovery in Garmin International v. Cuozzo Speed Technologies,
`Case IPR2012-00001 (Paper 20).
`The Board also reminded the parties that Board authorization is not
`required to conduct routine discovery. See 37 C.F.R. § 42.51(b)(1).
`Motion for Observation on Cross-Examination
`The Board indicated that no further authorization is needed for a party
`to file a motion for observation on cross-examination, because such motions
`are authorized in the Scheduling Order (Paper 9).
`
`4
`
`
`
`IPR2014-00493 (Patent 7,899,167 B1)
`IPR2014-00749 (Patent 8,577,003 B2)
`
`Motion for Pro Hac Vice Admission
`The Board reminded the parties that they have been authorized to file
`motions for pro hac vice admission. See Notice of Filing Date Accorded to
`Petition (Paper 4). The Board also explained that an unopposed motion for
`pro hac vice admission would enable the Board to act before the five days
`allowed for opposition has expired.
`
`
`
`PETITIONER:
`
`Lori A. Gordon
`Michael B. Ray
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-PTAB@skgf.com
`mray-PTAB@skgf.com
`
`PATENT OWNER:
`
`Rajiv P. Patel
`Darren E. Donnelly
`FENWICK & WEST LLP
`rpatel-ptab@fenwick.com
`ddonnelly-ptab@fenwick.com
`
`
`
`5
`
`
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