Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Date: 16 April 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SCHRADER-BRIDGEPORT INTERNATIONAL, INC. et al.
`Petitioner
`
`v.
`
`CONTINENTAL AUTOMOTIVE SYSTEMS US, INC.
`Patent Owner
`____________
`
`Case IPR2013-00014
`Patent 6,998,973
`____________
`
`
`Before SALLY C. MEDLEY, JOSIAH C. COCKS, and MICHAEL W. KIM
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
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`571-272-7822
`
`Paper 16
`Date: 16 April 2013
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`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SCHRADER-BRIDGEPORT INTERNATIONAL, INC. et al.
`Petitioner
`
`v.
`
`CONTINENTAL AUTOMOTIVE SYSTEMS US, INC.
`Patent Owner
`____________
`
`Case IPR2013-00014
`Patent 6,998,973
`____________
`
`
`Before SALLY C. MEDLEY, JOSIAH C. COCKS, and MICHAEL W. KIM
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00014
`Patent 6,998,973
`
`
`
`On April 15, 2013, the following individuals participated in the initial
`
`
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`conference call:1
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`(1) Mr. Bryan Collins and Mr. Robert Fuhrer, counsel for Schrader;
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`(2) Mr. Timothy Baumann2 and Mr. Steven Parmelee, counsel for
`
`Continental; and
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`(3) Sally Medley, Josiah Cocks, and Michael Kim, Administrative Patent
`
`Judges.
`
`Motions List
`
`In preparation for the initial call, both parties filed a motions list. Papers 16
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`and 17. Schrader does not seek authorization to file any motions. However,
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`Continental does. The parties were reminded that the purpose of the motions list is
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`to provide the Board and an opposing party adequate notice to prepare for the
`
`initial call and the proceeding. See, e.g., 37 C.F.R. § 42.21(a) and Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012). In particular,
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`the list should contain a short, concise statement generally relaying enough
`
`information for the Board and opposing counsel to understand the proposed
`
`motion. As explained during the call, Continental’s motions list with respect to its
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`proposed motion for discovery does not provide adequate notice. Instead of
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`dismissing the motions list, the Board determined to proceed with the motions list
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`information, and any other information provided during the conference call, to
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`determine whether to authorize a motion for discovery.
`
`
`1 The initial conference call is held to discuss the Scheduling Order and any
`motions that the parties anticipate filing during the trial. Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48756, 48765 (Aug. 14, 2012).
`2 Messrs. Boyd Cloern and Benjamin Warlick, counsel for Continental in the
`related litigation were also present. Counsel for Schrader did not object to their
`presence and limited participation.
`
`2
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`
`
`
`IPR2013-00014
`Patent 6,998,973
`
`
`
`Pro Hac Vice Admission
`
`
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`Continental requests authorization to file a motion for pro hac vice
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`admission of Boyd Cloern and Benjamin Warlick. Paper 16.
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`Section 42.10(c) provides that:
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`The Board may recognize counsel pro hac vice during a proceeding
`upon a showing of good cause, subject to the condition that lead
`counsel be a registered practitioner and to any other conditions as the
`Board may impose. For example, where the lead counsel is a
`registered practitioner, a motion to appear pro hac vice by counsel
`who is not a registered practitioner may be granted upon showing that
`counsel is an experienced litigating attorney and has an established
`familiarity with the subject matter at issue in the proceeding.
`
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`The Board authorizes both parties to file motions3 for pro hac vice
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`admission under 37 C.F.R. § 42.10(c). Such motions shall be filed in accordance
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`with the “ORDER – AUTHORIZING MOTION FOR PRO HAC VICE
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`ADMISSION” in Case IPR2013-00010 (MPT), a copy of which is available on the
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`Board Web site under “Representative Orders, Decisions, and Notices.” Note,
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`however, that the Office published a Final Rule adopting new Rules of
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`Professional Conduct. See Changes to representation of others Before the
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`United States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180
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`(Apr. 3, 2013). The changes set forth in that Final Rule take effect on
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`May 3, 2013. Any motion for pro hac vice admission filed by the parties should
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`also indicate that the person sought to be admitted will be subject to the Office’s
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`new Rules of Professional Conduct which become effective on May 3, 2013.
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`
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`3 As discussed in connection with Continental’s pro hac vice motion, the Board
`prefers a single motion; however Continental is authorized to file two separate
`motions for pro hac vice admission of the two individuals if needed.
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`
`3
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`IPR2013-00014
`Patent 6,998,973
`
`
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`Motion to Amend
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`
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`During the call, counsel for Continental represented that at this time,
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`Continental does not intend to file a motion to amend. As discussed, if Continental
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`determines that it will file a motion to amend, Continental must arrange a
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`conference call with the Board and opposing counsel to discuss the proposed
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`motion to amend.
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`Proposed Motion for Discovery
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`The parties were reminded that they may agree to additional discovery
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`between themselves, and only if they disagree is it necessary to seek Board
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`authorization to file a motion for additional discovery. 37 CFR § 42.51(b)(2).
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`Based on the facts presented during the initial conference call, it became apparent
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`that the parties may be able to work out an agreement regarding the additional
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`discovery Continental seeks to obtain from Schrader. Counsel for the respective
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`parties are commended for their decorum and their willingness to work together to
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`try to come to such an agreement. For the above reasons, Continental is not
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`authorized to file a motion for additional discovery at this time.
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`Counsel for the respective parties indicated that they have no issues with the
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`Schedule
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`Scheduling Order (Paper 13) entered on March 13, 2013.
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`Settlement
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`Lastly, the parties represented that they have no report regarding settlement.
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`It is
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`Order
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`ORDERED that the parties are authorized to file motions for pro hac vice
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`admission under 37 C.F.R. § 42.10(c), and that such motions shall be filed in
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`accordance with the “ORDER – AUTHORIZING MOTION FOR PRO HAC VICE
`
`4
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`IPR2013-00014
`Patent 6,998,973
`
`
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`ADMISSION” in Case IPR2013-00010 (MPT), a copy of which is available on the
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`Board Web site under “Representative Orders, Decisions, and Notices;” any such
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`motion shall indicate that the person sought to be admitted will be subject to the
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`Office’s new Rules of Professional Conduct which become effective on
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`May 3, 2013; and
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`FURTHER ORDERED that no other motions are authorized at this time.
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`
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`For PETITIONER:
`
`Bryan P. Collins
`Robert M. Fuhrer
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1650 Tysons Blvd
`McLean, Virginia 22102
`bryan.collins@pillsburylaw.com
`Robert.fuhrer@pillsburylaw.com
`
`For PATENT OWNER
`
`Timothy Baumann
`Steven Parmlee
`Fitch Even Tabin & Flannery
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`tbaumann@fitcheven.comsgparm@fitcheven.com
`
`
`
`5
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`
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