`571-272-7822
`
`Date: October 17, 2013
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`
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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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`ZYNGA INC.
`Petitioners,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner.
`____________
`
`Case IPR2013-00156
`Patent 7,860,131 B1
`____________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`
`
`call:
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
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`On October 17, 2013, the following individuals participated in a conference
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`(1) Mr. David Cochran and Mr. Louis Touton, counsel for Zynga, Inc.
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`(“Zynga”);
`
`
`
`Case IPR2013-00156
`Patent 7,860,131
`
`(2) Mr. Thomas Scott, Jr. and Mr. Stephen Schreiner, counsel for
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`Personalized Media Communications (“PMC”); and
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`(3) Sally Medley, Karl Easthom, and Joni Chang, Administrative Patent
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`Judges.
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`The purpose of the conference call was for PMC to confer with the Board
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`prior to filing a motion to amend. 1
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`
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`Motion to Amend
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`PMC explained that it intends to file a motion to amend. The parties were
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`directed to the Patent Trial Practice Guide for guidance. See Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48766-48767 (Aug. 14, 2012). More
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`specifically, in any motion to amend PMC files, the motion must explain in detail
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`how any proposed substitute claim obviates the grounds of unpatentability
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`authorized in this trial and clearly identify where corresponding written description
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`support in the specification can be found for each claim added. If the motion to
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`amend includes a proposed substitution of claims beyond a one-for-one
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`substitution, the motion must explain why more than a one-for-one substitution of
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`claims is necessary. 37 C.F.R. § 42.121. For further guidance regarding these
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`requirements, the parties were directed to two Board decisions: (1) IPR2012-
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`00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027, Paper 26 (June 11, 2013).
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`Counsel for PMC represented that PMC intends to file a motion to amend,
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`moving to substitute a claim for claim 1 involved in the case. Counsel for PMC
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`further represented that PMC did not intend to file a motion to amend in any of the
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`related cases (IPR2013-00162, 00164 or 00171).
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`
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`1 37 C.F.R. § 42.121(a) provides that a patent owner may file one motion to amend,
`but only after conferring with the Board.
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`2
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`
`
`
`Case IPR2013-00156
`Patent 7,860,131
`
`For PETITIONER:
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`David Cochran
`dcochran@jonesday.com
`
`Joseph Sauer
`jmsauer@jonesday.com
`
`Louis Touton
`lltouton@jonesday.com
`
`David Wu
`dwwu@jonesday.com
`
`For PATENT OWNER:
`
`Thomas Scott, Jr.
`tscott@goodwinprocter.com
`
`Stephen Schreiner
`sschreiner@goodwinprocter.com
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`3
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`