`Tel: 571-272-7822
`
`
`
`
`Paper: 35
`Entered: April 11, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`COMPANY, INC., EXPEDIA, INC., HOTELS.COM LP, HOTELS.COM
`GP, LLC, HOTWIRE, INC., ORBITZ WORLDWIDE, INC.,
`PRICELINE.COM, INC., TRAVELOCITY.COM LP, and YAHOO! INC.
`Petitioner
`
`v.
`
`METASEARCH SYSTEMS, LLC
`Patent Owner
`____________
`
`Case CBM2014-00001
`Patent 8,326,924 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`The panel held an initial conference call in the above proceeding on
`
`April 10, 2014, between respective counsel for Petitioner and Patent Owner,
`
`and Judges Blankenship, Easthom, and Benoit. The following subjects were
`
`discussed during the conference:
`
`Scheduling Order
`
`The parties may seek to alter the Scheduling Order. The parties are
`
`reminded that, without obtaining prior authorization from the Board, they
`
`may stipulate to different dates for DATES 1-3, as provided in the
`
`Scheduling Order, by filing an appropriate notice with the Board. The
`
`parties may not stipulate to any other changes to the Scheduling Order.
`
`Motions
`
`Prior to the conference, Petitioner and Patent Owner each filed a list
`
`of proposed motions.
`
`Petitioner requested to file a motion to correct a typographical error in
`
`the name of a listed real party-in-interest. Patent Owner does not object.
`
`Petitioner is authorized to file the motion.
`
`Patent Owner indicated that it may file a motion to amend. A motion
`
`to amend must explain in detail how any proposed substitute claim obviates
`
`the grounds of unpatentability authorized in this proceeding, and identify
`
`where the corresponding written description support in the original
`
`disclosure can be found for each claim added. If the motion to amend
`
`includes a proposed substitution of claims beyond a one-for-one substitution,
`
`the motion must explain why more than a one-for-one substitution of claims
`
`is necessary. For further guidance regarding these requirements, Patent
`
`2
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`Owner is directed to several decisions concerning motions to amend: Nichia
`
`Corporation v. Emcore Corporation, IPR2012-00005, Paper 27 (June 3,
`
`2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26
`
`(June 11, 2013), Paper 66 (January 7, 2014); ZTE Corp. v. ContentGuard
`
`Holdings, IPR2013-00136, Paper 33 (November 7, 2013); InvenSense, Inc.
`
`v. STMicroelectronics, Inc., IPR2013-00241, Paper 21 (January 9, 2014);
`
`and Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013-
`
`00423, Paper 27 (March 7, 2014).
`
`Patent Owner has met the requirement to confer with the Board before
`
`filing a motion to amend. 37 C.F.R. § 42. 221(a). However, to the extent
`
`that questions arise later, we encourage Patent Owner to contact the Board to
`
`arrange a conference call.
`
`Patent Owner also anticipates filing a motion to exclude evidence.
`
`Patent Owner briefly explained the nature of the evidence that Patent Owner
`
`may move to exclude. Patent Owner served Petitioner with its objection.
`
`Petitioner intends to respond.
`
`The parties are reminded that, except as otherwise provided in the
`
`Rules, Board authorization is required before filing a motion. 37 C.F.R.
`
`§ 42.20(b). A party seeking to file a motion should request a conference to
`
`obtain authorization to file the motion.
`
`Protective Order
`
`The parties may confer and decide to seek entry of the Board’s default
`
`protective order.
`
`3
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`It is hereby ORDERED that the Petitioner is authorized to file a
`
`motion to correct a typographical error in the name of a real party-in-
`
`interest.
`
`
`
`
`
`
`
`4
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`For Petitioner:
`
`John Vandenberg
`john.vandenberg@klarquist.com
`
`Kristen Reichenbach
`kristen.reichenbach@klarquist.com
`
`For Patent Owner:
`
`Cyrus Morton
`camorton@rkmc.com
`
`Ryan Schultz
`rmschultz@rkmc.com
`
`5
`
`
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