Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 12
`Date Entered: January 20, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00919
`Patent 7,848,353 B2
`____________
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571.272.7822
`
`
`
`Paper No. 12
`Date Entered: January 20, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00919
`Patent 7,848,353 B2
`____________
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
`
`1. Introduction
`On January 14, 2015, an initial conference call was conducted
`between respective counsel for the parties and Judges Cocks, Capp, and
`McKone. The conference call in this proceeding, IPR2014-00919 was
`conducted in conjunction with three other related proceedings –– IPR2014-
`00915, IPR2014-00921, and IPR2014-00963 –– involving the same parties.
`In the IPR2014-00919 proceeding, Petitioner, Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson (collectively “Petitioner”) was represented
`by David O’Dell, and Intellectual Ventures II LLC (“Patent Owner”) was
`represented by Herbert Hart. The purpose of the call was to determine if the
`parties have any issues concerning the Scheduling Order (Paper 9), and to
`discuss any motions contemplated by the parties.
`Patent Owner indicated that it had arranged a court reporter to be
`present on the call. When a transcript of the call becomes available, Patent
`Owner should file a copy as an Exhibit in this proceeding.
`
`2. Scheduling Order
`Neither party indicated any issues with DUE DATES 1–6 of the
`Scheduling Order. 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.
`During the call, some discussion was had between the parties and the
`panel in connection with DUE DATE 7 (date for oral argument). In that
`respect, counsel for one of the parties indicated that it appeared that oral
`argument for all four related cases was tentatively scheduled for the same
`day, which may present logistical issues given that the parties are not
`
`1 The parties may not stipulate to changes for any other DUE DATE.
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
`
`
`represented by the same counsel in each proceeding. In reviewing the
`Scheduling Orders for the four related proceedings, the panel observes that,
`if requested by the parties, oral argument in IPR2014-00915 and IPR2014-
`00919 is scheduled to occur on August 25, 2015, while oral argument for
`IPR2014-00921 and IPR2014-00963 is scheduled for August 26, 2015.
`Thus, oral argument for the four related cases are not all scheduled for the
`same day. At this time, the DUE DATE 7 for IPR2014-00919 will remain
`as set forth in the corresponding Scheduling Order.
`
`3. Protective Order
`The parties have not discussed a protective order at this time. No
`protective order has been entered. Should circumstances change, the parties
`are reminded of the requirement for a protective order when filing a Motion
`to Seal. See 37 C.F.R. § 42.54. If the parties have agreed to a proposed
`protective order, including the Standing Default Protective Order, 77 Fed.
`Reg. 48,756, App. B (Aug 14, 2012), they should file a signed copy of the
`proposed protective order with the motion to seal. If the parties choose to
`propose a protective order other than or departing from the default Standing
`Protective Order, they must submit a joint, proposed protective order,
`accompanied by a red-lined version based on the default protective order in
`Appendix B to the Board’s Office Patent Trial Practice Guide. See id. at
`48,769.
`
`4. Discovery
`The parties are reminded of the discovery provisions of 37 C.F.R.
`§§ 42.51–52 and Office Trial Practice Guide. See 77 Fed. Reg. at 48,761–
`62. Discovery requests and objections are not to be filed with the Board
`
`2
`
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
`
`
`without prior authorization. The parties may request a conference with the
`Board if the parties are unable to resolve discovery issues between them. A
`motion to exclude, which does not require Board authorization, must be filed
`to preserve any objection. See 37 C.F.R. § 42.64; Office Trial Practice
`Guide, 77 Fed. Reg. at 48,767. There are no discovery issues pending at this
`time.
`
`Each party may depose experts and affiants supporting the opposing
`party. The parties are reminded of the provisions for taking testimony found
`at 37 C.F.R. § 42.53 and the Office Trial Practice Guide at 77 Fed. Reg. at
`48,772, App. D.
`
`5. Motions
`The parties are reminded that, except as otherwise provided in the
`Rules, Board authorization is required before filing a motion. See 37 C.F.R.
`§ 42.20(b). A party seeking to file a motion should request a conference to
`obtain authorization to file the motion.
`In connection with IPR2014-00919, Patent Owner filed a list of
`proposed motions. Paper 10. Petitioner did not file a list. After inquiry
`from the panel, Patent Owner represented that the proposed motions listed
`were essentially “placeholders” that the party ultimately may seek to file,
`rather than motions that are contemplated actively. The panel advised the
`parties that such “placeholders” for motions that parties may seek to file at a
`later time are not necessary. As noted above, when a party desires to file a
`motion, they should obtain authorization from the panel to file such motion,
`with the exception of motions for which prior authorization is not practical
`(see Office Trial Practice Guide at 77 Fed. Reg. at 48,762).
`No additional motions are authorized in this proceeding at this time.
`3
`
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
`
`
`6. Motion to Amend
`Although Patent Owner may file one motion to amend the patent by
`
`cancelling or substituting claims without Board authorization, Patent Owner
`must confer with the Board before filing a motion to amend. See 37 C.F.R.
`§ 42.121(a). During the call, Patent Owner indicated that it may file a
`motion to amend, but was not yet prepared to discuss such a motion with the
`panel. Should Patent Owner intend to file such a motion, it should arrange a
`conference call with the panel and opposing counsel at least one week before
`DUE DATE 1 in order to satisfy the conferral requirement of 37 C.F.R.
`§ 42.121(a).
`
`7. Settlement
`The parties stated that there is no immediate prospect of settlement
`that will affect the conduct of this proceeding.
`
`
`
`
`4
`
`
`
`
`IPR2014-00919
`Patent 7,848,353 B2
`
`
`
`
`
`For PETITIONER:
`
`Andrew Lowes
`David M. O’Dell
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`david.odell.ipr@haynesboone.com
`
`For PATENT OWNER:
`
`Herbert D. Hart III
`David Z. Petty
`McANDREWS, HELD & MALLORY, LTD.
`hhart@mcandrews-ip.com
`dpetty@mcandrews-ip.com
`
`Donald J. Coulman
`INTELLECTUAL VENTURES
`dcoulman@intven.com
`
`5
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