`571.272.7822
`
`
`
`
`Paper No. 14
`Entered: April 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SPTS TECHNOLOGIES LTD.,
`Petitioner,
`
`v.
`
`PLASMA-THERM LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01674
`Patent 8,802,545 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, ELIZABETH M. ROESEL, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`
`A conference call was held on Thursday, March 29, 2018, among
`Harvey Kauget and Ryan Corbett, counsel for Patent Owner; Adam
`Volentine, counsel for Petitioner; and Administrative Patent Judges Saindon,
`Roesel, and Wieker. The purpose of the call was to discuss Patent Owner’s
`intention to file a contingent motion to amend and, thus, to satisfy its duty to
`confer as required by 37 C.F.R. § 42.121(a).
`During the call, we reminded the parties that a motion to amend is
`authorized by 35 U.S.C. § 316(d), and is further regulated in 37 C.F.R.
`§ 42.121. Patent Owner’s Motion to Amend must comply with these
`provisions.
`Furthermore, as set forth in 37 C.F.R. § 42.24, Patent Owner’s Motion
`to Amend, and Petitioner’s Opposition thereto, are limited to twenty-five
`(25) pages. 37 C.F.R. §§ 42.24(a)(1)(vi), 42.24 (b)(3). Patent Owner’s
`Reply thereto is limited to twelve (12) pages. Id. § 42.24(c)(3). Pursuant to
`our Scheduling Order, these papers must be filed by April 12, July 12, and
`August 13, 2018, respectively. Paper 8, 7; see also id. at 2 (authorizing the
`parties to stipulate to alter these dates, and requiring notice to the Board).
`Counsel for Patent Owner and counsel for Petitioner indicated that
`they did not have any questions for the panel regarding amendment practice.
`
`
`ORDER
`Accordingly, in consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner has satisfied its obligation, pursuant to
`37 C.F.R. § 42.121(a), to confer with the Board prior to filing a motion to
`amend.
`
`
`
`
`2
`
`
`
`IPR2017-01674
`Patent 8,802,545 B2
`
`
`PETITIONER:
`
`Adam C. Volentine
`Josh Povsner
`Volentine, Whitt & Francos PLLC
`avolentine@volentine.com
`jpovsner@volentine.com
`
`PATENT OWNER:
`
`Harvey S. Kauget
`Ryan M. Corbett
`Burr & Forman LLP
`hkauget@burr.com
`rcorbett@burr.com
`
`
`
`
`
`3
`
`