`Date: May 23, 2013
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INNOLUX CORPORATION
`Petitioner
`
`v.
`
`SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`____________
`
`Case IPR2013-00066 (SCM)
`Patent 7,876,413 B2
`____________
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and KEVIN F. TURNER
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On May 22, 2013, the following individuals participated in the initial
`
`
`
`
`
`
`
`IPR2013-00066
`Patent 7,876,413 B2
`
`conference call:1
`(1) Mr. Scott McKeown and Mr. Gregory Cordrey, counsel for Innolux;
`(2) Mr. Mark Murphy, Mr. Edward Manzo, Mr. Stanley Schlitter, and
`Mr. Douglas Peterson, counsel for SEL; and
`(3) Sally Medley, Karl Easthom, and Kevin Turner, Administrative Patent
`Judges.
`
`Motions List
`In preparation for the initial call, SEL filed a motions list. Paper 20.
`However, Innolux did not. Counsel for Innloux confirmed that Innolux does not
`seek to file any motions.
`
`
`Motion to Amend
`During the call, counsel for SEL represented that at this time, SEL does not
`intend to file a motion to amend. As discussed, if SEL determines that it will file a
`motion to amend, SEL must arrange a conference call soon thereafter with the
`Board and opposing counsel to discuss the proposed motion to amend.
`
`Motion for Additional Discovery
`The parties may agree to additional discovery between themselves and only
`if they disagree is it necessary to seek Board authorization to file a motion for
`additional discovery. 37 CFR § 42.51(b)(2). The parties could not agree to the
`additional discovery SEL seeks, and therefore SEL requests authorization to file a
`motion for additional discovery. Paper 20 at 3-6.
`
`
`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 (Aug. 14, 2012).
`2
`
`
`
`
`IPR2013-00066
`Patent 7,876,413 B2
`
`
`
`
`
`The proposed motion for additional discovery appears to be nearly identical
`to the motion for additional discovery filed in IPR2013-00028 or IPR2013-00038.
`The motions for additional discovery filed in those two cases were denied.
`Counsel for the respective parties indicated that they had read and reviewed the
`decisions in those two cases. In light of the decisions, counsel for SEL indicated
`that SEL withdraws its request to file a motion for additional discovery in this case.
`Accordingly, there is no occasion to authorize a motion for additional discovery.
`
`
`Schedule
`Counsel for the respective parties indicated that they have no issues with the
`Scheduling Order (Paper 11) entered April 24, 2013.
`
`
`Settlement
`There was no report of settlement.
`
`
`Rehearing Request
`Counsel for SEL inquired as to when a decision on SEL’s request for
`
`rehearing will be rendered. A decision will be rendered in due course. In any
`event, and as explained, a rehearing request does not toll times for taking action in
`the proceeding. 37 C.F.R. § 42.71(d).
`
`3
`
`
`
`
`
`
`IPR2013-00066
`Patent 7,876,413 B2
`
`
`
`Order
`
`
`
`It is
`ORDERED that no motions are authorized at this time.
`
`4
`
`
`
`
`
`
`
`
`
`
`IPR2013-00066
`Patent 7,876,413 B2
`
`
`For PETITIONER:
`
`Scott A. McKeown
`OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
`cpdocketmckeown@oblon.com
`
`Gregory S. Cordey
`JEFFER, MANGELS, BUTLER & MITCHELL LLP
`gcordey@jmbm.com
`
`For PATENT OWNER:
`
`Mark J. Murphy
`Edward D. Manzo
`HUSCH BLACKWELL
`Mark.murphy@huschblackwell.com
`Edward.manzo@huschblackwell.com
`
`Stanly A. Schlitter
`Douglas R. Peterson
`STEPTOE & JOHNSON
`Sschlitt&Steptoe.com
`dpeterson@steptoe.com
`
`
`
`5
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