`Tel: 571-272-7822
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` Paper 27
`Entered: May 23, 2013
`
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`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 (Patent 6,516,236)
`Case IPR2013-00074 (Patent 8,073,557)1
`____________
`
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
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`
`
`
`1 This Order addresses a joint initial conference for these cases. The parties are not
`authorized to use this caption for any subsequent papers without authorization from
`the Board.
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`
`
`IPR2013-00062 (Patent 6,516,236)
`IPR2013-00074 (Patent 8,073,557)
`
`
`
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`On May 21, 2013, the following individuals participated in a joint initial
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`
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`conference call in these matters: (1) Richard D. McLeod, counsel for Petitioner;
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`(2) Richard T. Black and Joel B. Ard, counsel for Patent Owner;
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`(3) Administrative Patent Judges Thomas L. Giannetti, Bryan F. Moore, and
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`Jennifer S. Bisk.
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`The following matters were discussed:
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`1. Status of Related District Court Action
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`The pending action in the Eastern District of Texas is at the Markman
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`Hearing stage. Patent Owner’s reply papers are due at the end of this week.
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`2. Schedule
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`The parties are satisfied with the current schedule. Petitioner noted that the
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`schedule may have to be adjusted depending on the outcome of joinder motions
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`described infra.
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`3. Protective Order
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`Currently the parties do not foresee the need for entry of a protective order.
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`They will contact the Board if that changes.
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`4. Initial Disclosures
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`The parties have not agreed to exchange initial disclosures. Neither party is
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`requesting them at this time.
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`5. Compelled Discovery and E-Discovery
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`The parties do not foresee the need for compelled discovery or special E-
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`discovery provisions at this time.
`
`2
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`
`
`
`IPR2013-00062 (Patent 6,516,236)
`IPR2013-00074 (Patent 8,073,557)
`
`
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`6. Motion to Amend Claims
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`
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`Patent Owner does not foresee filing a motion to amend the claims at this
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`7. Other Motions
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`Petitioner has filed additional petitions for inter partes review (IPR2013-
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`time.
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`
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`
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`00282, IPR2013-00286) and moved to join them with this proceeding if granted.
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`Patent Owner intends to oppose.
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`
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`Petitioner requested authorization to file supplemental materials from the
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`litigation, i.e., the briefs for the Markman hearing. The Board authorized the
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`motion. Patent Owner agreed to advise the Board whether or not it opposes after
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`receiving the motion.
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`8. Settlement
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`Neither party is aware of the status of settlement. A mediation is scheduled
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`for June in the pending litigation.
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`In view of the foregoing, it is hereby
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`ORDERED that Petitioner is authorized to file a motion to supplement
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`
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`directed to claim construction briefing in the related litigation. This motion is due
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`within one week of the entry date of this Order. Petitioner is directed to 37 C.F.R.
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`§ 42.123 for guidance on the content of this motion.
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`
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`FURTHER ORDERED that Patent Owner shall advise the Board within five
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`days of receipt of the foregoing motion whether or not the motion is opposed.
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`3
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`
`
`IPR2013-00062 (Patent 6,516,236)
`IPR2013-00074 (Patent 8,073,557)
`
`
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`
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`PETITIONER:
`
`Richard D. McLeod
`John D. Vandenberg
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`john.vandenberg@klarquist.com
`
`
`
`PATENT OWNER:
`
`Richard T. Black
`Joel B. Ard
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
`
`
`
`4
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