Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper No. 3
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`KATUN CORPORATION,
`Petitioner,
`
`v.
`
`TOSHIBA TEC CORPORATION and
`TOSHIBA AMERICA BUSINESS SOLUTIONS, INC.,
`Patent Owners.
`_______________
`
`Case IPR2016-01010
`Patent 9,098,015 B2
`_______________
`
`Mailed: May 18, 2016
`
`
`
`Before DAVID SCHMERFELD, Trial Paralegal.
`
`
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`The petition for inter partes review in the above proceeding has been
`
`accorded the filing date of May 6, 2016.
`
`A review of the petition identified the following defects:
`
`(i)
`Failure to comply with the word limit for petitions, 37 C.F.R.
`§ 42.24(a) and failure to include a proper certification stating the number of
`
`

`
`Case IPR2016-01010
`Patent 9,098,015 B2
`
`words in the petition, id. § 42.24(d). Petitioner certifies that the petition
`“contains 13,995 words, excluding any Grounds for Standing and Mandatory
`Notices.” Pet. 90. Grounds for standing, however, may not be excluded
`from the word count. See 37 C.F.R. § 42.24(a)(1); Amendments to the
`Rules of Practice for Trials Before the Patent Trial and Appeal Board;
`Correction, 81 Fed. Reg. 24,702, 24,703 (Apr. 27, 2016) (correction
`removing reference to “grounds for standing” from 37 C.F.R. § 42.24(a)(1)).
`
`(ii) Failure to label exhibits properly. 37 C.F.R. § 42.63(d).
`Exhibit 1021 does not contain page numbers beyond page 12. See id.
`§ 42.63(d)(2)(i) (“When the exhibit is a paper . . . [e]ach page must be
`uniquely numbered in sequence.”).
`Petitioner must correct the defects within FIVE BUSINESS DAYS
`
`from this notice. Failure to correct the defects may result in an order to
`show cause as to why the Board should institute the trial. No substantive
`changes (e.g., new grounds) may be made to the petition.
`
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012),
`which is available on the Board’s website at http://www.uspto.gov/PTAB.
`
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition.
`
`The parties are encouraged to use the heading on the first page of this
`
`

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`Case IPR2016-01010
`Patent 9,098,015 B2
`
`Notice for all future filings in the proceeding.
`
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`§ 42.10(c). Such motions shall be filed in accordance with the “ORDER
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board’s website under
`“Representative Orders, Decisions, and Notices.”
`
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`Patent Review Processing System (PRPS), accessible from the Board’s
`website at http://www.uspto.gov/PTAB. To file documents, users must first
`obtain a user ID and password by registering with PRPS. Information
`regarding how to register with and use PRPS is available at the Board’s
`website.
`
`If there are any questions pertaining to this notice, please contact
`David Schmerfeld at 571-272-7184 or the Patent Trial and Appeal Board at
`571-272-7822.
`
`
`
`PETITIONER:
`Cyrus A. Morton
`cmorton@robinskaplan.com
`Miles A. Finn
`MFinn@RobinsKaplan.com
`Li Zhu
`LZhu@RobinsKaplan.com
`
`

`
`Case IPR2016-01010
`Patent 9,098,015 B2
`
`
`
`PATENT OWNERS:
`Amin, Turocy & Watson, LLP
`127 Public Sq., Fl. 57
`Key Tower
`Cleveland, OH 44114-1233
`
`

`
`Case IPR2016-01010
`Patent 9,098,015 B2
`
`
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION (ADR)
`
`The Patent Trial and Appeal Board (PTAB) strongly encourages parties who are
`
`considering settlement to consider alternative dispute resolution as a means of settling the issues
`that may be raised in an AIA trial proceeding. Many AIA trials are settled prior to a Final Written
`Decision. Those considering settlement may wish to consider alternative dispute resolution
`techniques early in a proceeding to produce a quicker, mutually agreeable resolution of a dispute
`or to at least narrow the scope of matters in dispute. Alternative dispute resolution has the
`potential to save parties time and money.
`
`Many non-profit organizations, both inside and outside the intellectual property field,
`
`offer alternative dispute resolution services. Listed below are the names and addresses of several
`such organizations. The listings are provided for the convenience of parties involved in cases
`before the PTAB; the PTAB does not sponsor or endorse any particular organization’s alternative
`dispute resolution services. In addition, consideration may be given to utilizing independent
`alternative dispute resolution firms. Such firms may be located through a standard keyword
`Internet search.
`
`
`
`
`
`CPR INSTITUTE
`FOR DISPUTE
`RESOLUTION
`
`Telephone:
`(212) 949-6490
`Fax: (212) 949-8859
`
`575 Lexington Ave
`New York, NY 10022
`
`AMERICAN
`INTELLECTUAL
`PROPERTY LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`www.cpradr.org
`
`www.aipla.org
`
`AMERICAN
`ARBITRATION
`ASSOCIATION
`(AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUAL
`PROPERTY
`ORGANIZATION
`(WIPO)
`Telephone:
`41 22 338 9111
`Fax: 41 22 733 5428
`34, chemin des
`Colombettes
`CH-1211 Geneva 20,
`Switzerland
`www.wipo.int
`
`AMERICAN BAR
`ASSOCIATION
`(ABA)
`
`Telephone :
`(202) 662-1000
`N/A
`1050 Connecticut Ave,
`NW
`Washington D.C. 20036
`
`www.americanbar.org
`
`
`
`If parties to an AIA trial proceeding consider using alternative dispute resolution, the PTAB
`would like to know whether the parties ultimately decided to engage in alternative dispute
`resolution and the reasons why or why not. If the parties actually engage in alternative dispute
`resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, mediation,
`etc.) was used and the general result. Such a statement from the parties is not required but would
`be helpful to the PTAB in assessing the value of alternative dispute resolution to parties involved
`in AIA trial proceedings. To report an experience with ADR, please forward a summary of the
`particulars to the following email address: PTAB_ADR_Comments@uspto.gov