`571-272-7822
`
`
`
`Paper 14
`Entered: December 20, 2016
`
`
`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 Owner.
`____________
`
`Case IPR2016-01010
`Patent 9,098,015 B2
`____________
`
`
`
`Before STACEY G. WHITE, JENNIFER MEYER CHAGNON, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2016-01010
`Patent 9,098,015 B2
`
`
`INITIAL CONFERENCE CALL SUMMARY
`
`On December 19, 2016, the initial conference call for this proceeding
`
`was held between respective counsel for the parties and Judges White,
`
`Chagnon, and Wormmeester.
`
`
`
`A.
`
`Scheduling Order
`
`The parties have already filed a joint stipulation as to different dates
`
`for DUE DATES 1–3. Paper 12. During the call, the parties indicated no
`
`other concerns at this time with the Scheduling Order.
`
`
`
`B. Motion to Amend
`
`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 date of such a motion, so that the parties will have
`
`sufficient time to consider any guidance we may provide. We also directed
`
`the parties to four cases that discuss and clarify the requirements for a
`
`motion to amend: (1) Idle Free Systems, Inc. v. Bergstrom, Inc., Case
`
`IPR2012-00027, slip op. at 3–10 (June 11, 2013) (Paper 26);
`
`(2) MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 3
`
`(July 15, 2015) (Paper 42) (Precedential); (3) Nichia Corp. v. Emcore Corp.,
`
`Case IPR2012-00005, slip op. at 3–4 (June 3, 2013) (Paper 27); and (4) ZTE
`
`Corp. and ZTE (USA) Inc. v. ContentGuard Holdings Inc., Case IPR2013-
`
`00136, slip op. at 2–4 (Nov. 7, 2013) (Paper 33).
`
`We noted that with respect to any feature the Patent Owner proposes
`
`to add by way of a substitute claim, Patent Owner should be aware of the
`
`duty of candor requirement under 37 C.F.R. § 42.11. We explained that the
`
` 2
`
`
`
`
`
`
`
`IPR2016-01010
`Patent 9,098,015 B2
`
`initial focus should be on the individual features proposed to be added, and
`
`that secondary references making up deficiencies of a primary reference are
`
`pertinent. MasterImage 3D, one of the cases to which we directed the
`
`parties, 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.”).
`
`Id. at 3.
`
`
`
`C. Other Motions
`
`Neither party indicated that it intends to file motions other than those
`
`discussed in this Order.
`
`
`
`D. Protective Order
`
`The parties were advised that a protective order will not be entered in
`
`this case unless the parties request one.
`
`
`
`E. Settlement
`
`The parties did not report anything regarding settlement.
`
` 3
`
`
`
`
`
`
`
`
`
`IPR2016-01010
`Patent 9,098,015 B2
`
`
`F. Related Proceedings
`
`The parties are reminded to notify the Board of any changes in related
`
`proceedings.
`
`
`
`It is
`
`ORDER
`
`ORDERED that any conference call to discuss a motion to amend
`
`claims by the Patent Owner shall take place at least two weeks prior to the
`
`due date of such a motion.
`
`
`
`PETITIONER:
`
`Cyrus Morton
`cmorton@robinskaplan.com
`
`Miles Finn
`mfinn@robinskaplan.com
`
`Li Zhu
`lzhu@robinskaplan.com
`
`
`
`PATENT OWNER:
`
`Douglas Stewart
`Doug.stewart@bracewellaw.com
`
`Jared Schuettenhelm
`Jared.schuettenhelm@bracewellaw.com
`
`Partrick Connolly
`Patrick.connnolly@bracewellaw.com
`
`
` 4
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