`571-272-7822
`
`Date: October 17, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`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.
`
`
`
`
`
`call:
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`On October 17, 2013, the following individuals participated in a conference
`
`(1) Mr. David Cochran and Mr. Louis Touton, counsel for Zynga, Inc.
`
`(“Zynga”);
`
`
`
`Case IPR2013-00156
`Patent 7,860,131
`
`(2) Mr. Thomas Scott, Jr. and Mr. Stephen Schreiner, counsel for
`
`Personalized Media Communications (“PMC”); and
`
`(3) Sally Medley, Karl Easthom, and Joni Chang, Administrative Patent
`
`Judges.
`
`The purpose of the conference call was for PMC to confer with the Board
`
`prior to filing a motion to amend. 1
`
`
`
`Motion to Amend
`
`PMC explained that it intends to file a motion to amend. The parties were
`
`directed to the Patent Trial Practice Guide for guidance. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48766-48767 (Aug. 14, 2012). More
`
`specifically, in any motion to amend PMC files, the motion must explain in detail
`
`how any proposed substitute claim obviates the grounds of unpatentability
`
`authorized in this trial and clearly identify where corresponding written description
`
`support in the specification can be found for each claim added. If the motion to
`
`amend includes a proposed substitution of claims beyond a one-for-one
`
`substitution, the motion must explain why more than a one-for-one substitution of
`
`claims is necessary. 37 C.F.R. § 42.121. For further guidance regarding these
`
`requirements, the parties were directed to two Board decisions: (1) IPR2012-
`
`00005, Paper 27 (June 3, 2013) and (2) IPR2012-00027, Paper 26 (June 11, 2013).
`
`Counsel for PMC represented that PMC intends to file a motion to amend,
`
`moving to substitute a claim for claim 1 involved in the case. Counsel for PMC
`
`further represented that PMC did not intend to file a motion to amend in any of the
`
`related cases (IPR2013-00162, 00164 or 00171).
`
`
`
`
`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.
`
`2
`
`
`
`
`Case IPR2013-00156
`Patent 7,860,131
`
`For PETITIONER:
`
`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
`
`3
`
`
`
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