Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 64
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`Entered: January 7, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
` .
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and JENNIFER S.
`BISK, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 64
`
`Entered: January 7, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
`
`Case IPR2013-00062
`Case IPR2013-00282
`Patent 6,516,236 B1
`____________
`
` .
`
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and JENNIFER S.
`BISK, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`On January 3, 2014, a telephone conference call was held between
`
`respective counsel for the parties and Judges Giannetti, Moore, and Bisk. The
`conference call was initiated by the Board in response to communications received
`from the parties following the Board’s Order of December 31, 2013 (Paper 63).
`
`The following issues were discussed and resolved:
`
`1. The Board requested the parties to avoid directing further telephonic and
`email communications to the Board that present the parties’ positions on various
`issues and request action by the Board, without prior authorization. These
`communications are contrary to the Board’s rules. Furthermore, such
`communications fall outside of the Board’s electronic filing system, and therefore
`are not part of the public record. For these reasons, unless otherwise authorized by
`the Board, all further emails and telephonic communications with the Board in
`these and related proceedings (IPR2013-00063, IPR2013-00074, IPR2013-00286,
`IPR2014-00122) should be limited to requesting conferences, but may be
`accompanied by a short (i.e., one sentence) explanation of the reason for the
`conference.
`
`2. In the December 31, 2013 Order, Patent Owner’s motion to exclude
`certain evidence (Paper 59) was dismissed as untimely. Petitioner and Patent
`Owner have stipulated to an extension of the due date for such motions, and Patent
`Owner will file a notice of such stipulation, as required under the Board’s joinder
`decision of August 9, 2013 in IPR2013- 00282 (Paper 15). Upon filing of the
`notice, the Board will reinstate this motion.
`
`3. The December 31, 2013 Order expunged as unauthorized Patent Owner’s
`motion for observations on cross-examination of certain testimony presented in
`Petitioner’s reply. Upon reconsideration, Patent Owner is granted leave to file
`
`2
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`such a motion. The Board observed that the motion for observations expunged by
`the December 31 Order (Paper 61) contained improper argument that should be
`avoided in the new submission.
`
`4. The December 31 Order denied Patent Owner’s request for authorization
`to file a response to Petitioner’s Reply, limited to the issue of whether certain
`references are antedated by prior conception and diligence (Paper 44). The Board
`has reviewed Petitioner’s Reply, and on reconsideration, has determined that a
`brief written response from the Patent Owner directed to this issue would be
`helpful.
`
`5. Patent Owner requested a change in the date of the final oral argument
`due to a scheduling conflict on the part of one of its counsel. That counsel is
`neither Lead nor Back-up Counsel, and the scheduling conflict arose after the date
`for final argument was set. Furthermore, the hearing date (January 23, 2014) was
`set in April 2013 to give the parties ample notice. Under the circumstances, the
`Board declines to change the original hearing date.
`
`In view of the foregoing, it is, therefore:
`
`ORDERED that unless otherwise requested by the Board, all further
`
`telephonic and email communications from the parties to the Board in these
`proceedings shall be limited to requests for a conference with the Board;
`
`FURTHER ORDERED that such communications may include a brief (i.e.,
`one sentence) explanation of why the conference is being requested, but no
`argument or other presentation of the parties’ positions on the issue is permitted
`unless requested by the Board;
`
`3
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`
`FURTHER ORDERED that conditioned on Patent Owner filing an
`
`appropriate notice of stipulation within five days of the entry of this Order, Patent
`Owner’s Motion to Exclude (Paper 59) will be deemed timely and reinstated, and
`Petitioner shall have two weeks from the entry date of this Order to file an
`opposition;
`
`FURTHER ORDERED that Patent Owner is authorized to file a reply
`limited to the issues raised at pages 1-8 in Petitioner’s Reply (Paper 44) concerning
`the Patent Owner’s attempt to antedate Gertz and Morrow by showing prior
`conception and diligence;
`
`FURTHER ORDERED that this reply is limited to five pages maximum,
`and must be filed within one week of the entry date of this Order;
`
`FURTHER ORDERED that Patent Owner is granted leave to file a Motion
`For Observations on Cross-Examination of certain witnesses referred to in
`Petitioner’s Reply, and such motion is due within one week of the entry date of this
`Order;
`
`FURTHER ORDERED that Petitioner shall have one week from filing of
`that Motion For Observations to file its responses to such observations, and the
`parties are directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48768
`(Aug. 14, 2012), for guidance in preparing their submissions, particularly the
`statement that “[t]he Board may refuse entry of excessively long or argumentative
`observations (or responses)”; and
`
`FURTHER ORDERED that Patent Owner’s request to reset the date for the
`final oral argument is denied.
`
`
`
`4
`
`
`
`
`IPR2013-00062
`IPR2013-00282
`Patent 6,516,236 B1
`
`Counsel for Petitioner:
`
`Richard D. McLeod
`KLARQUIST SPARKMAN LLP
`rick.mcleod@klarquist.com
`
`Counsel for Patent Owner:
`
`Richard T. Black
`FOSTER PEPPER PLLC
`blacr@foster.com
`
`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER
`meyer@bsflp.com
`
`
`
`
`
`5
`
`
`
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