`571-272-7822
`
`Paper 32
`Date: June 28, 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 (SCM)
`Patent 7,297,364 B2
`_______________
`
`
`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
`
`
`
`call:
`
`On June 26, 2013, the following individuals participated in a conference
`
`(1) Mr. Alan Barry and Mr. Jason Engel, counsel for LKQ;
`(2) Mr. Bryan Wheelock, counsel for Clearlamp; and
`
`
`
`Case IPR2013-00020
`Patent 7,297,364 B2
`
`
`
`(3) Sally Medley, Kevin Turner, and Josiah Cocks, Administrative Patent
`Judges.
`The purpose of the conference call was for the parties to seek guidance
`regarding a motion to seal, a protective order, and a motion to amend.
`
`
`
`
`Motion to Seal and Protective Order
`Counsel for Clearlamp explained that in support of its Patent Owner
`Response, Clearlamp intends to rely on evidence obtained in the related litigation.
`This evidence is apparently subject to a district court protective order. Clearlamp
`requests to submit the evidence under seal.
`As explained, the record files for an inter partes review shall be made
`available to the public, except that a document filed with a motion to seal shall be
`treated as sealed until the motion is decided. 35 U.S.C. § 316 (a)(1); 37 C.F.R. §
`42.14. A party may file a motion to seal where the motion contains a proposed
`protective order, such as the default protective order set forth in the Office Patent
`Trial Practice Guide. The standard for granting a motion to seal is good cause. 37
`C.F.R. § 42.54(a).
`Counsel for the respective parties indicated that they have a protective order
`that is very close to the Board’s default protective order. As explained, any
`changes between the default protective order and the parties’ proposed protective
`order must be explained in the motion to seal. Moreover, the parties should file a
`separate redlined version of the proposed protective order showing the differences
`between the default protective order and the proposed protective order.
`
`
`
`
`2
`
`
`
`
`Case IPR2013-00020
`Patent 7,297,364 B2
`
`
`
`
`
`Motion to amend
`Counsel for Clearlamp indicated that Clearlamp will file a motion to amend.
`General guidance was provided during the call regarding motions to amend.
`The parties are directed to the Patent Trial Practice Guide for guidance. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766-48767 (Aug. 14, 2012).
`More specifically, in any motion to amend that Clearlamp files, the motion must
`explain in detail how the proposed substitute claims obviates the grounds of
`unpatentability authorized in this trial and clearly identify where corresponding
`written description support in the specification 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. 37 C.F.R. § 42.121. For further guidance
`regarding these requirements, the parties are directed to Board decisions: (1)
`IPR2012-00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027, Paper 26 (June
`11, 2013).
`Counsel for Clearlamp requested a page extension of the fifteen page limit
`for its motion to amend. The request was denied as premature. Counsel for
`Clearlamp did not represent that he had a complete draft that was currently over
`the allotted page limit. The parties are encouraged to stay within the confines of
`the regulations for the proceeding. As further explained, Clearlamp should
`consider that it need not substitute a claim for each claim involved in the case. A
`single claim may suffice.
`
`
`
`
`
`
`3
`
`
`
`
`Case IPR2013-00020
`Patent 7,297,364 B2
`
`
`
`Order
`
`
`
`It is
`ORDERED that Clearlamp’s request for an extension of the page limit for
`its motion to amend is denied;
`FURTHER ORDERED that the parties are authorized to file a motion to seal
`along with a proposed protective order; and
`FURTHER ORDERED that the parties identify in a separate redlined or
`marked up copy, how the proposed protective order departs from the Board’s
`default protective order appearing in the Trial Practice Guide.
`
`
`
`
`For PETITIONER:
`Alan L. Barry
`Jason A. Engel
`K&L GATES LLP
`alan.barry@klgates.com
`jason.engel@klgates.com
`
`
`For PATENT OWNER
`
`Matthew L. Cutler
`Bryan K.Wheelock
`Douglas A. Robinson
`HARNESS, DICKEY & PIERCE, PLC
`mcutler@hdp.com
`bwheelock@hdp.com
`drobinson@hdp.com
`
`
`
`4
`
`
`
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