Trials@uspto.gov
`571-272-7822
`
`Paper 26
`Date: May 2, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`CLEARLAMP, LLC
`Patent OWNER
`_______________
`
`Case IPR2013-00020
`Patent 7,297,364
`_______________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`JOSIAH C. COCKS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On May 1, 2013, the following individuals participated in the initial
`
`
`571-272-7822
`
`Paper 26
`Date: May 2, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`CLEARLAMP, LLC
`Patent OWNER
`_______________
`
`Case IPR2013-00020
`Patent 7,297,364
`_______________
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`JOSIAH C. COCKS, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On May 1, 2013, the following individuals participated in the initial
`
`
`
`
`
`
`
`Case IPR2013-00020
`Patent 7,297,364 B2
`
`conference call:1
`(1) Mr. Alan Barry and Mr. Jason Engel, counsel for LKQ;
`(2) Mr. Bryan Wheelock, counsel for Clearlamp; and
`(3) Sally Medley, Kevin Turner, and Josiah Cocks, Administrative Patent
`Judges.
`In preparation for the initial call, both parties filed a motions list. Papers 24
`and 25. The following proposed motions and other matters were discussed during
`the call.
`
`
`Motion to File Supplemental Evidence
`LKQ seeks authorization to file a motion to submit supplemental evidence in
`the event Clearlamp challenges evidence submitted thus far by LKQ. Paper 24 at
`1. Counsel for Clearlamp confirmed that Clearlamp did not serve any objection to
`evidence LKQ submitted during the preliminary proceeding, and thus there is no
`occasion for LKQ to file any supplemental evidence. See, 37 CFR 42.64(b)(1) and
`(2). Accordingly, the Board did not authorize a motion for LKQ to file
`supplemental evidence.
`
`
`Motion to Reconsider Certain Findings in the Board’s Decision to Institute
`LKQ seeks authorization to file a motion to reconsider certain findings in the
`Board’s Decision to Institute (Paper 18; “Decision”) (i) that certain proposed
`grounds of unpatentability are redundant; and (ii) that certain disclosures do not
`constitute admitted prior art. Paper 24 at 1.
`
`
`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
`
`
`
`
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`Case IPR2013-00020
`Patent 7,297,364 B2
`
`
`
`As explained, a party dissatisfied with a decision may file a request for
`rehearing without prior authorization from the Board. However, the time for filing
`such a request is within 14 days of the entry of the decision to institute. See 37
`C.F.R. § 42.71. The time has expired to file a rehearing request. As explained, a
`late filing of the rehearing request will be excused on a showing of good cause or
`upon a Board decision that consideration on the merits would be in the interests of
`justice. 37 C.F.R. § 42.5(c)(3). In light of this explanation, counsel for LKQ
`represented that LKQ no longer seeks authorization to file a rehearing request.
`
`
`Motion to Amend Claims
`Clearlamp intends to file a motion to amend claims. Paper 25 at 2. The
`Board explained that any motion to amend must be filed with a detailed
`explanation as to how the proposed substitute claims obviate the grounds of
`unpatentability authorized in this trial, and a clear identification of where in the
`written description support for the claim amendment can be found. 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. 37 C.F.R. § 42.221. A motion to amend should be filed as a
`separate paper, and not within the same paper as a patent owner response. Lastly,
`the parties were directed to the Patent Trial Practice Guide that explains that
`petitioners may respond to new issues arising from proposed substitute claims
`including evidence responsive to the amendment. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48766-48767 (Aug. 14, 2012).
`In addition to the motion to amend, Clearlamp intends to file a response to
`the petition. The Board noted that any arguments for patentability not raised and
`fully briefed in the response will be deemed waived.
`
`3
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`Case IPR2013-00020
`Patent 7,297,364 B2
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`
`
`
`
`
`
`
`Protective Order
`Clearlamp requests entry of a protective order. Paper 25 at 2. Counsel for
`
`the respective parties indicated that they will discuss the matter further to
`determine if a protective order is desired and whether the parties can agree on the
`content of the protective order. The parties understand that the Board has a default
`protective order that may be used in this proceeding.
`Upon further consideration, and to the extent the parties agree upon a
`protective order, the parties are authorized to file a joint proposed protective order.
`To the extent the joint proposed protective order deviates from the Board’s default
`protective order, the parties must identify how the proposed order departs from the
`Board’s default order appearing in Appendix B to the Board’s Trial Practice Guide.
`See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48769.
`
`
`Schedule
`Counsel for the respective parties indicated that they have no issues with the
`Scheduling Order (Paper 19) entered on March 29, 2013.
`
`
`Settlement
`The parties represented that they are in negotiations, but have no agreement
`regarding settlement.
`
`
`Miscellaneous
`LKQ filed a motion to designate registered patent attorney, Mr. Jason Engel,
`
`as back-up counsel in place of Ms. Boice. Paper 20. The motion is dismissed. As
`explained, a motion was not necessary under the circumstances presented. LKQ
`
`4
`
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`Case IPR2013-00020
`Patent 7,297,364 B2
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`
`should update the counsel information in the Patent Review Processing System
`(PRPS) by adding Mr. Engel to the system. In addition, LKQ should file a paper
`under 37 CFR § 42.8(a)(3) notifying the Board of the replacement of back-up
`counsel. Should a question arise regarding adding Mr. Engel to the PRPS system,
`LKQ may contact the Board at 571-272-7822 for assistance.
`
`Lastly, the parties indicated that the related litigation is stayed pending the
`inter partes review. The parties agreed to file a notice under 37 CFR § 42.8(a)(3)
`indicating the same.
`
`
`
`Order
`
`It is
`ORDERED that LKQ’s motion to designate back-up counsel (Paper 20) is
`dismissed;
`FURTHER ORDERED that the parties are authorized to file a proposed
`protective order in accordance with the instructions provided above;
`FURTHER ORDERED that any proposed protective order is due no later
`than May 16, 2013; and
`FURTHER ORDERED that the parties provide the 37 CFR § 42.8(a)(3)
`notification updates in accordance with the instructions provided per this order.
`
`
`
`
`
`
`
`5
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`
`
`Case IPR2013-00020
`Patent 7,297,364 B2
`
`
`
`
`
`For PETITIONER:
`Alan L. Barry
`Jason Engel
`K&L GATES LLP
`Alan.barry@klgates.com
`Jason.engel@klgates.com
`
`
`
`For PATENT OWNER
`
`Matthew L. Cutler
`Bryan Wheelock
`HARNESS, DICKEY & PIERCE, PLC
`mcutler@hdp.com
`bwheelock@hdp.com
`
`
`
`
`6
`
`
`
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