`Trials@uspto.gov
`571-272-7822 Entered: June 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`SPEED MONITORING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01500
`Patent 7,389,198 B1
`____________
`
`
`Before KARL D. EASTHOM and LYNNE E. PETTIGREW,
`Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On June 18, 2015, a conference call was held between respective
`counsel for the parties and Judges Easthom and Pettigrew. Patent Owner
`requested the call to satisfy its requirement to confer with the Board before
`filing a motion to amend claims. See 37 C.F.R. § 42.121(a).
`
`
`
`IPR2014-01500
`Patent 7,389,198 B1
`
`On the call, Patent Owner indicated it plans to file a contingent
`motion to amend proposing one to three substitute claims.
`We reminded the parties of the recent amendments to our rules
`modifying the page limits for motions to amend, oppositions to motions to
`amend, and replies to oppositions to motions to amend. See 80 Fed. Reg.
`28,561, 28,565 (May 19, 2015) (amending 37 C.F.R. § 42.24).
`We also provided the following guidance regarding motions to amend.
`Generally, a challenged claim can be replaced by only one claim, and a
`motion to amend should, for each proposed substitute claim, specifically
`identify the claim it is intended to replace, and whether the proposed claim
`amendment is contingent on the corresponding challenged claim being
`determined to be unpatentable. In a motion to amend, a claim amendment
`may not enlarge the scope of the claims and must be responsive to a ground
`of unpatentability involved in the trial. 37 C.F.R. § 42.121(a)(2). The
`burden is on Patent Owner to demonstrate written description support in the
`originally filed disclosure, not just the issued patent, for each proposed
`substitute claim. Patent Owner also must show why the claims are
`patentable over the prior art of record, as well as prior art not of record but
`known to Patent Owner to be material to the amended claims at issue.
`We refer the parties to the following orders, and orders cited therein,
`for additional guidance regarding the content of motions to amend: Corning
`Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441,
`Paper 19 (Oct. 30, 2014), and Toyota Motor Corp. v. American Vehicular
`Sciences LLC, IPR2013-00419, Paper 32 (Mar. 7, 2014).
`
`
`
`2
`
`
`
`IPR2014-01500
`Patent 7,389,198 B1
`
`ORDER
`
`It is
`ORDERED that Patent Owner has satisfied the requirement “to
`confer” with the Board pursuant to 37 C.F.R. § 42.121(a).
`
`
`FOR PETITIONER:
`Eric A. Buresh
`Jason R. Mudd
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`jason.mudd@eriseip.com
`
`FOR PATENT OWNER:
`John R. Kasha
`Kelly L. Kasha
`Kasha Law LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`
`3
`
`
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