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Paper No. 18
`Trials@uspto.gov
`571-272-7822 Entered: June 1, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORP.,
`
`Petitioner,
`
`v.
`
`IDEMIA IDENTITY & SECURITY USA LLC1
`and L-1 SECURE CREDENTIALING, LLC
`
`Patent Owner.
`____________
`
`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083,152 B2)
`____________
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`1 Formerly known as MorphoTrust USA, LLC according to Patent Owner.
`See IPR2017-01938, Paper 14. Patent Owner filed a similar paper in each
`case.
`
`1
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`At Patent Owner’s request, the panel held a conference call on May
`30, 2018 with the parties to discuss Patent Owner’s intention to file a
`motion to amend in each of the proceedings, and thus, meet its duty to
`confer as required by 37 C.F.R. § 42.121(a). During the call, Patent
`Owner acknowledged familiarity with guidance provided in Western
`Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082 (PTAB Apr. 25,
`2018) (Paper 13) (informative). For further guidance, see id.
`In consideration of the foregoing, it is
`ORDERED that Patent Owner has satisfied the requirement of
`conferring with us prior to filing a motion to amend under 37 C.F.R.
`§ 42.121(a).
`
`
`
`
`
`2
`
`

`

`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`PETITIONER:
`
`Lionel M. Lavenue
`Guang-Yu Zhu
`David C. Seastrunk
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`guang-yu.zhu@finnegan.com
`david.seastrunk@finnegan.com
`rachel.emsley@finnegan.com
`
`
`
`
`
`
`
`
`PATENT OWNER:
`
`Scott McKeown
`ROPES & GRAY LLP
`Scott.McKeown@ropesgray.com
`Marc W. Vander Tuig
`Richard L. Brophy
`James M. Heinen, Jr.
`Patrick W. Rasche
`ARMSTRONG TEASDALE LLP
`mvandertuig@armstrongteasdale.com
`rbrophy@armstrongteasdale.com
`jheinen@amstrongteasdale.com
`prasche@armstrongteasdale.com
`
`3
`
`

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