`571-272-7822
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` Paper 13
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` Entered: June 20, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Oracle Corporation
`Petitioner
`
`v.
`
`Clouding IP, LLC
`Patent Owner
`
`
`Case IPR2013-00073 (JL)
`Patent 6,738,799
`
`
`Before JAMESON LEE, JONI Y. CHANG, and MICHAEL W. KIM,
`Administrative Patent Judges.
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`LEE, Administrative Patent Judge.
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`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`On June 19, 2013, counsel for Clouding initiated a telephone conference call
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`
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`with the Board to confer about filing a motion to amend claims. Judges Lee,
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`Chang, and Kim participated in the conference call with counsel of each party.
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`Counsel for Clouding indicated that in a contingent motion to amend claims,
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`Clouding would seek to replace each of independent claims 1, 23, and 37. The
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`
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`Case IPR2013-00073
`Patent 6,738,799
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`Board directed attention of the parties to Paper 26 in IPR2012-00027, dated June
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`11, and Paper 27 in IPR2012-00005, dated June 3, 2013, with regard to the
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`requirements of filing a motion to amend claims, and noted that Clouding would
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`have to account for the level of ordinary skill in the art and the basic skill set
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`possessed by one with ordinary skill, and may not limit its consideration to just the
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`references over which this trial was instituted. The Board also noted that when
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`indicating written description support in the specification, Clouding should make
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`reference to the disclosure in the original application as filed, rather than to
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`portions of the issued patent, and provide sufficient explanation in addition to
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`citations to specification.
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`Counsel for Clouding inquired whether it can propose to substitute two
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`claims for one independent claim. The Board replied that Clouding would have to
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`present a special circumstance, e.g., each of the two new claims present a feature,
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`not present in the other, which provide the basis of patentable distinction over the
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`prior art, and that the two substitute claims are patentably distinct from each other.
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`Clouding may choose however it desires to utilize its authorized pages for the
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`motion. The Board cautioned that a patent owner has much to do even in
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`demonstrating patentability of just one substitute claim.
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`It is
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`ORDERED that Clouding has met the requirement to confer with the Board
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`prior to filing a motion to amend claims under 37 C.F.R. § 42,121(a).
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`-2-
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`
`
`Case IPR2013-00073
`Patent 6,738,799
`
`For PETITIONER
`
`Greg Gardella
`Scott A. McKeown
`Michael Kiklis
`OBLON SPIVAK
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`cpdocketkiklis@oblon.com
`
`
`For PATENT OWNER
`
`Tarek N. Fahmi
`Amy J. Embert
`Fahmi, Sellers & Embert
`tarek.fahmi@tnfip.com
`amy.embert@fseip.com
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`-3-
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