`
`
`Paper 19
`Entered: November 1, 2013
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`An initial conference call in the above proceedings was held on
`October 30, 2013, among respective counsel for Petitioner and Patent
`Owner, and Judges Tierney, Arbes, and Braden. The purpose of the call was
`to discuss any proposed changes to the Scheduling Orders in the proceedings
`and any motions that the parties intend to file. Prior to the call, Petitioner
`and Patent Owner filed notices (Papers 19 and 21 in Case CBM2013-00020,
`and Papers 16 and 18 in Case CBM2013-00023) listing various potential
`motions. The following issues were discussed.
`
`
`Schedule
`The parties indicated that they do not have any issues with the
`Scheduling Orders.
`
`
`Additional Back-Up Counsel
`Petitioner and Patent Owner both stated that they may file motions for
`pro hac vice admission of additional attorneys as back-up counsel. The
`parties are directed to the “Order -- Authorizing Motion for Pro Hac Vice
`Admission” in Case IPR2013-00639, Paper 7 (a copy of which is available
`on the Board Web site under “Representative Orders, Decisions, and
`Notices”), regarding the requirements for pro hac vice admission.
`
`
`Protective Order
`Petitioner indicated that it may request a protective order to be entered
`at some point in the proceedings. The parties are directed to the
`requirements of 37 C.F.R. § 42.54 and the instructions for filing documents
`in the Patent Review Processing System (PRPS) on the Board’s website at
`
`
`
`2
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp. Should the parties believe
`there is a need to file certain information under seal at some point in these
`proceedings, the parties may file a motion to seal containing a proposed
`protective order. The motion should identify specifically how the proposed
`protective order differs from the Board’s default protective order and explain
`why such changes are warranted. If there are any changes, the parties should
`file with the motion a separate redlined version of the proposed protective
`order showing the differences between the default protective order and the
`proposed protective order.
`
`
`Motion for Additional Discovery
`Patent Owner requested authorization to file a motion for additional
`discovery of materials pertaining to the alleged commercial success of
`Petitioner’s iTunes Music Store (“ITMS”) and an alleged nexus between the
`claimed inventions and such commercial success. The parties indicated that
`they were still in the process of discussing the issue. The Board encouraged
`the parties to continue those discussions to reach an agreement on what
`materials should be produced, if any. Further, to the extent possible, Patent
`Owner should identify specific materials or information it is requesting in
`discovery. If the parties cannot reach an agreement, Patent Owner may
`request another conference call. No motion for additional discovery is
`authorized at this time.
`
`
`Motion to Permit Two Attorneys to Observe the Proceedings
`Patent Owner requested authorization to file a motion to permit two of
`its litigation counsel, Tracy Tosh Lane and Sean M. Callagy, to observe the
`
`
`
`3
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`instant proceedings. Patent Owner stated that the attorneys would only
`observe and would not participate in the proceedings in any way. Patent
`Owner argued that having the attorneys observe is warranted because they
`are aware of the litigation record and documents that may be relevant or
`need to be requested in discovery in the instant proceedings. Petitioner
`objected to the two attorneys observing these proceedings, arguing that they
`are prohibited from doing so under the terms of a protective order in the
`related district court litigation. Patent Owner responded that the two
`attorneys would not be violating the protective order by observing these
`proceedings.
`The Board took the matter under advisement, and encouraged the
`parties to work together to resolve the issue. The Board also advised the
`parties that issues pertaining to counsel obligations under the protective
`order can only be resolved by the district court, not the Board. The parties
`shall file, by November 8, 2013, a joint statement stating whether an
`agreement has been reached regarding the request to observe the
`proceedings.
`
`
`Motion to Amend in Case CBM2013-00023
`Patent Owner stated that it has not yet determined whether it will file
`a motion to amend in Case CBM2013-00023. Should Patent Owner decide
`to file a motion to amend, Patent Owner must request a conference call and
`confer with the Board before doing so. See 37 C.F.R. § 42.121(a).
`
`
`
`4
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`
`
`
`
`5
`
`
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