`571-272-7822
`
`
`
`
`Paper 7
`Entered: July 27, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`
`Before JONI Y. CHANG and JUSTIN T. ARBES,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases. The
`parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`On July 26, 2016, a conference call was held between counsel for both
`parties, and Judges Chang and Arbes. Patent Owner initiated the conference
`call to request authorization to file a motion to file: (1) a request for a
`certification of correction pursuant to 37 C.F.R. § 1.323 for Patent 8,266,432
`B2 (“the ’432 patent”), which is the involved patent in both above-identified
`CBM proceedings; and (2) a petition under 37 C.F.R. § 1.78(e) to accept an
`unintentional delayed benefit claim of a prior-filed application. Petitioner
`opposed.
`In view of the particular facts presented in these proceedings, we
`determined additional briefing on the issue would be helpful.
`It is hereby:
`ORDERED that, within five business days, Patent Owner is
`authorized to file a motion to file a request for a certification of correction
`and to file a petition to accept an unintentional delayed benefit claim, in each
`above-identified CBM proceeding, explaining specifically why filing a
`request for certificate of correction and such a petition is appropriate;
`FURTHER ORDERED that, within five business days from the filing
`of Patent Owner’s motion, Petitioner is authorized to file an opposition to
`the motion in each above-identified CBM proceeding;
`FURTHER ORDERED that each motion and each opposition are
`limited to five pages; and
`FURTHER ORDERED that no reply is authorized at this time.
`
`2
`
`
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`
`CBM36137-0007CP1@fr.com
`CBM36137-0007CP2@fr.com
`PTABInbound@fr.com
`
`For PATENT OWNER:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`NOVICK, KIM & LEE, PLLC
`
`skim@nkllaw.com
`hnovick@nkllaw.com
`slee@nkllaw.com
`
`3