`571-272-7822
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` Paper 12
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` Entered: November 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MARKER VOLKL USA, INC.,
`Petitioner
`
`v.
`
`KNEEBINDING, INC.,
`Patent Owner
`____________
`
`Case IPR2017-01265
`Patent 8,955,867 B2
`
`____________
`
`Before MICHAEL W. KIM, PATRICK R. SCANLON, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On November 2, 2017, the initial telephone conference call for this
`proceeding was held between respective counsel for the parties and Judges Kim,
`Scanlon, and Meyers.
`
`
`
`IPR2017-01265
`Patent 8,955,867 B2
`
`
`Scheduling Order
`During the conference call, counsel for both parties indicated that they do
`not, at this time, need to request modifying any due dates set in the Scheduling
`Order dated October 18, 2017 (Paper 11). Counsel were informed that there is
`flexibility to modify all due dates, except the date for Oral Hearing (Paper 11, Due
`Date 7: June 27, 2018). Counsel also were informed that although Due Date 4
`(Paper 11, Due Date 4: May 21, 2018) may be adjusted, both parties must still
`enter their request for Oral Hearing by May 21, 2018.
`Proposed Motions
`Neither party filed a list of proposed motions prior to the conference call.
`Protective Order
`Counsel were informed that no protective order has been entered in the case
`at this time.
`Motion to Amend
`Patent Owner indicated that they are still considering whether or not to file a
`motion to amend. Counsel was reminded that if and when Patent Owner desires to
`file a motion to amend claim(s), a conference call should be requested to confer
`with the Board at least two weeks prior to the filing of such a motion. See 37
`C.F.R. § 42.121(a). The Board directs counsel to Toyota Motor Co. v. American
`Vehicular Sciences LLC, Case IPR2013-00421 (PTAB Feb. 11, 2014) (Paper 21)
`for guidance concerning motions to amend.
`In the event Patent Owner does file a motion to amend, Petitioner indicated
`that they are concerned about having adequate opportunity to respond to the
`
`
`
`
`
`2
`
`
`
`IPR2017-01265
`Patent 8,955,867 B2
`
`motion, in light of the recent decision by the U.S. Court of Appeals for the Federal
`Circuit in Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL 4399000 (Fed.
`Cir. Oct. 4, 2017) (en banc). We note, however, that the current rules provide
`Petitioner the opportunity, in its opposition, to raise any basis for denying the
`proposed motion to amend, including procedural bases, as well as address any
`grounds of unpatentability that it believes applies to the proposed amended claims.
`That said, should there be a need to adjust the schedule in light of changes
`necessitated by Aqua Products, the parties should feel free to contact the Board to
`schedule a call to discuss their concerns.
`Motion to Exclude and Observations on Cross-Examination
`Counsel are reminded that motions to exclude and observations on cross-
`examination should not be treated as sur-replies. Guidance for proper motions to
`exclude and observations on cross-examination can be found in sections II.K and
`II.L of the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14,
`2002).
`
`It is
`
`ORDERED that if and when Patent Owner desires to file a motion to amend,
`a conference call should be requested to confer with the Board at least two weeks
`prior to the filing of such a motion. See 37 C.F.R. § 42.121(a).
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01265
`Patent 8,955,867 B2
`
`For PETITIONER
`Patrick D. McPherson
`Carolyn A. Alenci
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`caalenci@duanemorris.com
`
`
`
`For PATENT OWNER
`Donald R. Steinberg
`Arthur C. H. Shum
`WILMER CUTLER PICKERING HALE AND DORR LLP
`don.steinberg@wilmerhale.com
`arthur.shum@wilmerhale.com
`
`
`
`
`
`4
`
`
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