`571.272.7822
`
`
`
`
`
`Paper No. 9
`Entered: March 3, 2016
`
`
`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 IPR2015-01664
`Patent 7,787,431 B2
`_______________
`
`
`
`Before JAMESON LEE, JUSTIN BUSCH, and J. JOHN LEE,
`Administrative Patent Judges.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`An initial telephone conference call was held on March 3, 2016. The
`
`participants were respective counsel for the parties and Judges Jameson Lee,
`Justin Busch, and John Lee. Neither party filed a list of proposed motions
`for discussion. The parties indicated that they were working on stipulating
`to changes in the due dates set in the Scheduling Order entered February 11,
`2016 (Paper 8), but that the parties had no issues with Due Dates 6 and 7 of
`the Scheduling Order.
`
`We directed the parties not to use the Motion to Exclude for any
`purpose other than admissibility issues under the Federal Rules of Evidence.
`If an issue arises with regard to a paper being out of proper scope, such as a
`reply, the parties shall contact the Board in a timely manner to raise the
`matter. We explained that all requests for conferences with the Board shall
`be preceded by a good faith effort to resolve any issue prior to Board
`involvement.
`We explained to the parties that supplemental evidence (see 37 C.F.R.
`
`§ 42.64) is distinct from supplemental information (see 37 C.F.R. § 42.123),
`and that the rules do not contemplate more than one cycle of objection to
`evidence and subsequent supplemental evidence to cure the objection.
`
`We further explained to the parties that, even if a protective order has
`been entered, a motion to seal must be filed concurrently with any filing a
`party desires to be under seal. Such a motion will only be granted if the
`associated burden of proof has been met. With regard to the substantive
`requirements of a Motion to Seal, the parties are directed to Corning Optical
`Communications RF, LLC v. PPC Broadband, Inc., IPR2015-00736 (Papers
`37, 38, 40)(PTAB 2015). A confidential version of a paper should be filed
`
`2
`
`
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`as “Parties and Board” in PRPS, and an appropriately redacted version of a
`document should be filed as “Public.”
`
`Finally, we instructed Patent Owner that if it decides to file a motion
`to amend claims, it must request a conference call with the Board at least
`two weeks prior to the due date of such a motion, so that the parties will
`have sufficient time to consider any guidance we may provide. We also
`asked Patent Owner to be prepared to discuss, during the conference call, the
`duty of candor requirement under 37 C.F.R. § 42.11 with respect to any
`feature that it proposes to add to a challenged claim. In that connection, we
`direct attention of the parties to MasterImage 3D, Inc. v. RealD Inc., Case
`IPR2015-00040, slip op. at 3 (PTAB July 15, 2015) (Paper 42)
`(Representative), which states:
`Thus, when considering its duty of candor and good faith under
`37 C.F.R. § 42.11 in connection with a proposed amendment,
`Patent Owner should place initial emphasis on each added
`limitation. Information about the added limitation can still be
`material even if it does not include all of the rest of the claim
`limitations. See VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23)
`(“With respect to the duty of candor under 37 C.F.R. § 42.11,
`counsel for Patent Owner acknowledged a duty for Patent Owner
`to disclose not just the closest primary reference, but also closest
`secondary reference(s) the teachings of which sufficiently
`complement that of the closest primary reference to be
`material.”).
`
`Order
`
`It is
`
`ORDERED that all due dates set in the Scheduling Order entered
`
`February 11, 2016 (Paper 8) remain unchanged, unless and until the parties
`file a notice of stipulation changing any of Due Dates 1–5.
`
`3
`
`
`
`
`
`IPR2015-01664
`Patent 7,787,431 B2
`
`For PETITIONER:
`
`J. Andrew Lowes
`David M. O’Dell
`John Russell Emerson
`Clint Wilkins
`HAYNES AND BOONE, LLP
`Andrew.lowes.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`
`
`
`For PATENT OWNER:
`
`Hebert Hart
`Peter McAndrews
`Sharon Hwang
`MCANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`pmcandrews@mcandrews-ip.com
`shwang@mcandrews-ip.com
`IV-IP15-01664@mcandrews-ip.com
`
`
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`
`4
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