`Tel: 571-272-7822
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` Paper 79
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`Entered: March 24, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`ABB, INC.
`Petitioner
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`v.
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`ROY-G-BIV CORPORATION
`Patent Owner
`_______________
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`Case IPR2013-00062
`Case IPR2013-00063
`Case IPR2013-000741
`____________
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`Before THOMAS L. GIANNETTI, JENNIFER S. BISK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
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`GIANNETTI, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`1 The parties are not authorized to use this unofficial caption.
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`
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`IPR2013-00062
`IPR2013-00063
`IPR2013-00074
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`On March 21, 2014, a telephone conference call was held between
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`respective counsel for the parties and Judges Giannetti, Bisk, and Plenzler. The
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`conference call was initiated by the Board in response to a communication
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`received from the Patent Owner’s counsel. A court reporter was present on the
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`call. Patent Owner will file the transcript as an exhibit.
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`Patent Owner seeks authorization to file a motion to submit supplemental
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`information under 37 C.F.R. § 42.123(b). The supplemental information consists
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`of a deposition transcript and related exhibits. Patent Owner is seeking to antedate
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`certain prior art by showing prior conception and diligence. Patent Owner asserts
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`that these materials provide independent corroboration of conception. Petitioner
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`opposes on the ground that the information sought to be filed could have been
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`obtained earlier. Petitioner also asserts that it will be prejudiced by the late
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`submission of this information.
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`After hearing argument, the panel ordered the following:
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`1. Patent Owner shall have until noon Eastern Time on Monday,
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`March 24, 2014, to file a motion to submit supplemental information.
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`2. The motion is limited to five pages and must address the requirements for
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`late submission of supplemental information under 37 C.F.R. § 42.123(b),
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`including the timing of the submission and why it is in the interests of justice to
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`grant the motion at this late stage.
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`3. The motion must be accompanied by an affidavit or declaration of counsel
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`setting forth the reasons why the information could not reasonably have been
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`obtained earlier.
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`2
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`IPR2013-00062
`IPR2013-00063
`IPR2013-00074
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`4. Patent Owner is ordered to submit the deposition transcript and exhibits
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`along with the motion. The exhibits may be filed later if they are not available to
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`be filed with the transcript.
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`5. Patent Owner may submit with the materials observations conforming
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`with the guidance in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
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`48768 (Aug. 14, 2012), not to exceed three pages in length.
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`6. Petitioner may file an opposition to the motion (not to exceed five pages)
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`and response to the observations (not to exceed three pages). These are due no
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`later than noon Eastern Time on Wednesday, March 27, 2014.
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`For Petitioner:
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`Richard D. McLeod
`Michael Jones
`KLARQUIST SPARKMAN LLP
`rick.mcleod@klarquist.com
`Michael.jones@klarquist.com
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`Steven Auvil
`SQUIRES SANDERS
`Steven.auvil@squiresanders.com
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`For Patent Owner:
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`Richard T. Black
`FOSTER PEPPER PLLC
`blacr@foster.com
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`Richard S. Meyer
`BOIES, SCHILLER & FLEXNER
`meyer@bsflp.com
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`3
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