`Tel: 571-272-7822
`
`
`
`
`Paper 19
`Entered: June 17, 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 (SCM)
`Patent 5,632,545
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`JUSTIN T. ARBES, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On June 13, 2013, the following individuals participated in a
`
`conference call:
`
`(1) Mr. David McCombs and Mr. Thomas King, counsel for Xilinx;
`
`(2) Mr. George Quillin and Mr. Paul Hunter, counsel for Intellectual
`
`
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`Ventures I, LLC (IV); and
`
`(3) Sally Medley, Karl Easthom, and Justin Arbes, Administrative
`
`Patent Judges.
`
`The purpose of the conference call was for IV to seek guidance
`
`regarding a motion to amend.
`
`
`
`Motion to Amend
`
`IV intends to file a motion to amend and sought guidance on how it
`
`should present its motion to amend. The parties were directed to the Trial
`
`Practice Guide and two recent Board decisions for further guidance on
`
`motions to amend: (1) IPR2012-00005, Paper 27 (June 3, 2013) and
`
`(2) IPR2012-00027, Paper 26 (June 11, 2013).
`
`Counsel for IV inquired whether unchanged claims, e.g., original
`
`patent claims, need to be included in the required listing in a motion to
`
`amend.1 The listing in a motion to amend is to include those substitute
`
`claims which a party seeks to substitute for an original claim. The listing
`
`may also include an indication that an original claim is to be cancelled
`
`(e.g., “Claim 1 (cancelled)”), for example, where a patent owner will not, in
`
`a patent owner response, contest the patentability of such a claim. The
`
`motion to amend listing should not include the text of the original claims.
`
`Counsel for IV also inquired whether it should amend its original
`
`claims or propose substitute claims. The Board indicated preference for the
`
`latter and not the former. As further discussed, the Board would expect to
`
`see the changes (between an original claim and substitute claim) annotated,
`
`
`1 37 C.F.R. § 42.121(b) requires that a motion to amend claims must include
`a claim listing.
`
`
`
`2
`
`
`
`Case IPR2013-00029
`Patent 5,632,545
`
`for example, by underlining additional language in a proposed substitute
`
`claim. The Board would not normally expect to see any deletions. See,
`
`e.g., IPR2012-00027, Paper 26 at 5.
`
`Various hypothetical proposed substitute claims were discussed. The
`
`Board discussed such hypothetical proposed substitute claims as best it
`
`could without providing an advisory opinion on whether a motion to amend
`
`with the certain proposed hypothetical claims would be granted. Providing
`
`such an advisory opinion at this juncture would be premature and possibly
`
`could prejudice Xilinx.
`
`Lastly, counsel for the respective parties indicated that they had
`
`agreed to extend DUE DATE 1 by one week. Counsel for IV indicated that
`
`he would file such notification as soon as possible.
`
`
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
