throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Date: May 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.,
`ZTE (USA) INC.,
`AND
`ZTE CORPORATION,
`Petitioner,
`v.
`3G LICENSING S.A.,
`Patent Owner.
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before TERRENCE W. MCMILLIN, AMANDA F. WIEKER,
`MONICA S. ULLAGADDI, and RUSSELL E. CASS,
`Administrative Patent Judges.1
`WIEKER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This is not an expanded panel. A three-judge panel is assigned to each
`proceeding. The parties are not authorized to use this caption.
`
`
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`A conference call was held on Tuesday, May 18, 2021, between
`Administrative Patent Judges Wieker, McMillin, and Ullagaddi, and counsel
`for the parties, including Brian Buroker, for Petitioner, and Timothy Devlin,
`for Patent Owner. The conference call was requested by Patent Owner, to
`discuss motions to amend.
`During the call, Patent Owner indicated that it is considering filing
`motions to amend in the captioned proceedings and also requesting that the
`panel issue preliminary guidance on any such motion(s). Patent Owner has
`not yet made a final decision as to whether motions to amend will be filed,
`and in which proceedings.
`The panel 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. Any
`motion to amend filed by Patent Owner in these proceedings must comply
`with these provisions. The panel also recommended that the parties ensure
`familiarity with the Board’s additional guidance on motions to amend, as set
`forth in the Consolidated Trial Practice Guide,2 the Board’s precedential
`decisions on this topic,3 and the Federal Register notice regarding the motion
`
`
`2 Patent Trial and Appeal Board Consolidated Trial Practice Guide,
`available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`(“Consolidated TPG”).
`3 See Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948,
`Paper 34 (PTAB Jan. 18, 2019); Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, 01130, Papers 15, 14 (PTAB Feb. 25, 2019), Hunting
`Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67
`(PTAB July 6, 2020, available at https://www.uspto.gov/patents-
`
`2
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`to amend pilot program.4
`Furthermore, the panel reminded the parties that Patent Owner’s
`Motion to Amend and Petitioner’s Opposition thereto, as well as any
`Revised Motion to Amend filed pursuant to the pilot program, are limited to
`twenty-five (25) pages. 37 C.F.R. §§ 42.24(a)(1)(vi), (b)(3); Consolidated
`TPG at 38, 66–73. Patent Owner’s Reply, and Petitioner’s Sur-Reply
`thereto, are limited to twelve (12) pages. Id. § 42.24(c)(3); Consolidated
`TPG at 38, 73–75. Pursuant to our Scheduling Order and the parties’
`stipulation to move Due Date 1,5 these papers must be filed by May 21, 2021
`(Motion); August 6, 2021 (Opposition); September 17, 2021 (Reply or
`Revised Motion); and October 29, 2021 (Sur-Reply).6 See, e.g., IPR2020-
`01161, Paper 12, 10; IPR2020-01161, Paper 17 (Notice of Stipulation to
`Move Deadlines).
`
`
`application-process/patent-trial-and-appeal-board/precedential-informative-
`decisions (last visited May 19, 2021).
`4 Notice Regarding a New Pilot Program Concerning Motion To Amend
`Practice and Procedures in Trial Proceedings Under the America Invents Act
`Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15,
`2019).
`5 The parties also have stipulated to move the portion of Due Date 2 not
`directed to motion to amend filings. See, e.g., IPR2020-01161, Paper 17.
`6 As noted in our Scheduling Order, if Patent Owner files a Revised Motion
`to Amend, we will enter a revised scheduling order. IPR2020-01161,
`Paper 12, 5.
`
`3
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`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.
`
`
`
`
`PETITIONER:
`
`Brian M. Buroker
`Paul Torchia
`Nathan R. Curtis
`Gibson, Dunn, & Crutcher LLP
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`
`John R. Hutchin
`C. Andy Mu
`Wesley W. Jones
`Banner & Witcoff, Ltd.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`
`
`4
`
`

`

`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`PATENT OWNER:
`
`Timothy Devlin
`Devlin Law Firm LLC
`td-ptab@devlinlawfirm.com
`
`5
`
`

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