`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: April 16, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`XILINX, INC.
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC
`Patent Owner
`____________
`
`Case IPR2013-00029
`Patent 5,632,545
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`The initial conference call in the instant proceeding was held on April
`11, 2013 between respective counsel for Petitioner and Patent Owner, and
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`Judges Medley, Easthom, and Arbes.1 In preparation for the call, Petitioner
`Xilinx, Inc. (“Xilinx”) filed a Notice of Motions indicating that “it does not
`presently intend to file any motions.” Paper 13. Patent Owner Intellectual
`Ventures I LLC (“IV”) filed a List of Proposed Motions indicating that it
`anticipates filing (1) a motion to amend the subject patent, (2) a motion to
`exclude evidence, and (3) other motions “as the occasion arises.” Paper 14.
`Regarding the proposed motion to amend, the parties were directed to
`the Trial Practice Guide for guidance. See Trial Practice Guide, 77 Fed.
`Reg. at 48766-67. Specifically, any motion to amend that IV files must
`explain how the proposed substitute claims obviate the grounds of
`unpatentability authorized in this trial and clearly identify where
`corresponding written description support in the specification of the patent
`can be found. 37 C.F.R. § 42.121. 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. Id. Xilinx in its opposition may respond to new issues arising
`from proposed substitute claims, including the submission of evidence
`responsive to the amendment and new expert declarations directed to the
`proposed substitute claims. Trial Practice Guide, 77 Fed. Reg. at 48767.
`Regarding the proposed motion to exclude evidence, IV indicated that
`authorization is not sought for any motion at this time but that IV may seek
`to file a motion based on evidence submitted by Xilinx in the future.
`
`
`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, 48765-66 (Aug. 14, 2012) (“Trial
`Practice Guide”).
`
`
`
`2
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`
`During the call, IV also asked whether it may in its patent owner
`response challenge the claim interpretations in the Board’s institution
`decision (Paper 11) and submit new evidence pertaining to claim
`interpretation. Xilinx pointed out that the time period for IV to request
`rehearing of the institution decision has expired. IV is not precluded from
`arguing claim interpretation in its patent owner response, and IV’s patent
`owner response may include affidavits or additional factual evidence
`pertaining to claim interpretation. See 37 C.F.R. § 42.120; Trial Practice
`Guide, 77 Fed. Reg. at 48766. We also note that because the institution
`decision was a panel decision, a request for rehearing was not necessary to
`preserve any related issue for review. See 37 C.F.R. § 42.71; Rules of
`Practice for Trials Before the Patent Trial and Appeal Board, 77 Fed. Reg.
`48612, 48624 (Aug. 14, 2012).
`Finally, counsel for the respective parties indicated that they have no
`issues with the Scheduling Order (Paper 12) entered on March 12, 2013.
`
`
`
`
`3
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`PETITIONER:
`
`David L. McCombs
`Thomas B. King
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, TX 75219
`david.mccombs@haynesboone.com
`thomas.king@haynesboone.com
`
`PATENT OWNER:
`
`George E. Quillin
`Paul S. Hunter
`FOLEY & LARDNER LLP
`3000 K Street, N.W., Suite 600
`Washington, DC 20007-5109
`gquillin@foley.com
`phunter@foley.com
`
`
`
`4
`
`
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