`571-272-7822
`
`
`Paper No: 22
`
` Entered: January 23, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`____________
`
`Case IPR2012-00026
`Patent 6,757,717
`____________
`
`
`
`Before SALLY C. MEDLEY, SCOTT R. BOALICK, and THOMAS L.
`GIANNETTI, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
` ORDER
`
`
`An initial telephone conference call in this matter was held on January
`22, 2013. The participants were John D. Vandenberg, Esq. for the
`Petitioner, Matthew L. Cutler for the Patent Owner, and Administrative
`Patent Judges Sally C. Medley, Scott R. Boalick, and Thomas L. Giannetti.
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`The following matters were discussed:
`
`1. Petitioner’s Submission Under 37 C.F.R. § 42.64(b)(2)
`Petitioner submitted supplemental evidence under this rule in response
`to Patent Owner’s objection to certain evidence as lacking proof of
`authenticity. Petitioner was advised that this submission was premature and
`would be expunged. At the proper time Petitioner may file the supplemental
`evidence in response to a motion by Patent Owner to exclude this evidence.
`
`
`
`2. Schedule
`If the pending motion for joinder in IPR2013-00109 is granted, the
`parties will request a two-month extension of the schedule. If there is no
`joinder, the current schedule is acceptable.
`
`3. Protective Order
`The parties are considering the need for a protective order covering
`certain Microsoft sales information sought by Patent Owner, and they
`requested two weeks to discuss the matter further before bringing the matter
`before the Board. The request was granted.
`
`4. Additional Discovery
`The parties have not exchanged mandatory disclosures. No compelled
`testimony or e-discovery requests are foreseen by either party.
`
`2
`
`
`
`
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`
`
`5. Motions
`Patent Owner will move to amend the claims at the time of filing the
`patent owner response. Patent Owner is reminded of the provisions of 37
`C.F.R. § 42.121, particularly the provision requiring that any amendment
`propose a reasonable number of substitute claims. As stated in the rule, the
`presumption is that only one claim would be needed to replace each
`challenged claim. See 37 C.F.R. § 42.121(a)(3). Patent Owner may also
`seek authorization to file a motion to compel certain Microsoft sales
`information if the above-mentioned discussions with Petitioner are not
`successful.
`
`6. Petitioner’s Motion for Reconsideration
`The parties were advised that the Petitioner’s motion for
`reconsideration of the decision not to institute a trial on certain claims is
`being taken under advisement by the Board.
`
`7. Settlement
`There have been no further settlement discussions.
`
`8. Other Matters
`The parties are filing a joint motion to dismiss the parallel district
`court litigation without prejudice.
`The parties request oral argument.
`The expert retained by Petitioner may not be available for a deposition
`in the Unites States during the scheduled period for discovery. If the joinder
`
`
`
`3
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`motion is granted and the schedule is extended by two months this will not
`be an issue.
`
`
`
`In consideration of the foregoing, it is, therefore,
`ORDERED that Petitioner’s submission of supplemental evidence
`(Papers 20-21; Exhibits 1019-1020) is premature, and those papers and
`exhibits are expunged from the record in this proceeding under 37 C.F.R.
`§ 42.7(a), without prejudice to Petitioner resubmitting such evidence at the
`proper time in response to a motion to exclude;
`FURTHER ORDERED that the parties shall have an additional two
`weeks from the entry date of this Order to confer on the need for a protective
`order and/or a motion to compel production of certain Microsoft sales
`information. At the end of that two-week period the parties shall arrange a
`conference call with the Board to advise the Board on the status of those
`discussions.
`
`
`
`
`
`4
`
`
`
`Case IPR2012-00026
`Patent 6,757,717
`
`BY ELECTRONIC TRANSMISSION
`
`FOR PETITIONER:
`
`JOHN D. VANDENBERG
`STEPHEN J. JONCUS
`KLARQUIST SPARKMAN LLP
`john.vandenberg@klarquist.com
`stephen.joncus@klarquist.com
`
`FOR PATENT OWNER:
`
`MATTEW L. CUTLER
`BRYAN K. WHEELOCK
`HARNESS, DICKEY & PIERCE
`mcutler@hdp.com
`bwheelock@hdp.com
`
`
`
`
`5
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