`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 14
`Entered: June 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC,
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00053
`Patent 9,528,262 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`ORDER
`Guidance on Potential Motion to Amend
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`PGR2017-00053
`Patent 9,528,262 B2
`
`
`On June 20, 2018, counsel for Patent Owner sent an e-mail
`
`communication to the Board requesting a telephone conference to discuss a
`
`potential Motion to Amend, which would be due on or before July 2, 2018
`
`under the current case schedule. This request was made to ensure
`
`compliance with 37 C.F.R. § 42.221(a), which provides Patent Owner may
`
`file a Motion to Amend “only after conferring with the Board.”
`
`Accordingly, a telephone conference was held on June 22, 2018.
`
`Administrative Patent Judges Hoskins, Worth, and Moore appeared for the
`
`Board. Mr. Connaughton appeared for Petitioner. Mr. Kinney and
`
`Ms. Beninati appeared for Patent Owner.
`
`The parties were informed that they should look to the decision in
`
`Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082,
`
`Paper 13 (PTAB Apr. 25, 2018), for guidance regarding motions to amend.
`
`The Western Digital decision has been designated as informative by the
`
`Board. The Western Digital decision arose in the context of an inter partes
`
`review, whereas this proceeding is a post-grant review. The parties were
`
`informed that if either party believes the Western Digital decision should not
`
`apply to this proceeding in one or more ways, or if the party otherwise has a
`
`question concerning the Western Digital decision, then the parties should
`
`contact the Board to schedule another telephone conference to discuss the
`
`issue.
`
`2
`
`
`
`PGR2017-00053
`Patent 9,528,262 B2
`
`PETITIONER:
`
`Gary E. Lambert
`David J. Connaughton, Jr.
`LAMBERT & ASSOCIATES
`lambert@lambertpatentlaw.com
`lawclerk@lambertpatentlaw.com
`
`James E. Hudson III
`CRAIN, CATON & JAMES
`jhudson@craincaton.com
`
`
`PATENT OWNER:
`
`Michael K. Kinney
`Christine W. Beninati
`MKG, LLC
`kinney@mkgip.com
`beninati@mkgip.com
`
`Peter A. Nieves
`SHEEHAN PHINNEY BASS & GREEN PA
`pnieves@sheehan.com
`
`3
`
`
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