`
` Entered: July 3, 2013
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION
`Petitioner,
`
`v.
`
`YISSUM RESEARCH DEVELOPMENT COMPANY
`OF THE HEBREW UNIVERSITY OF JERUSALEM
`Patent Owner.
`_______________
`
`Cases IPR2013-00218 (Patent 6,665,003 B1) (SCM)
`IPR2013-00219 (Patent 7,477,284 B2)1
`_______________
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and JAMES B. ARPIN,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
` 37 C.F.R. § 42.5
`
`
`
`On July 2, 2013, the following individuals participated in a conference call:
`
`
`1 This order addresses a single issue raised in both cases. We exercise discretion to
`issue one order to be filed in each case. The parties, however, are not authorized to
`use this style heading in subsequent papers since doing so may cause confusion.
`
`
`
`IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)
`
`
`(1) Mr. Walter Hanley and Ms. Michelle Carniaux, counsel for Sony;
`
`(2) Mr. David McCombs, Mr. William Nelson, and Mr. Robert Gerrity,
`
`counsel for Yissum; and
`
`(3) Sally Medley, Karl Easthom, and James Arpin, Administrative Patent
`
`Judges.
`
`The purpose of the conference call was for Sony to seek authorization to file
`
`two motions for joinder. Counsel for Sony explained that Sony intends to file a
`
`petition requesting an inter partes review of claims 4, 5, and 34 of Patent No. US
`
`6,665,003 B1 and a petition requesting an inter partes review of claims 4, 7, and 38
`
`of Patent No. US 7,744,284 B2. The Board understands that Sony would seek
`
`joinder under 35 U.S.C. § 315(c) when filing the additional petitions. As such, Sony
`
`seeks authorization to file motions for joinder under 37 C.F.R. § 42.122(b) in the
`
`additional proceedings. Yissum opposes.
`
`The Board appreciates Sony’s arrangement of the conference call to inform the
`
`Board and Yissum of its intentions, however, based on the facts presented, prior
`
`authorization to file the motions for joinder accompanying the additional petitions is
`
`not necessary. See, e.g., FAQ H5 on the Board’s website page at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp. Nonetheless, general guidance was
`
`provided regarding a motion for joinder. As explained, a motion for joinder should
`
`explain why joinder is appropriate, identify any new grounds of unpatentability
`
`asserted in the additional petition, and explain what impact joinder would have on
`
`the scheduling of events. The Board explained that, if Sony filed the additional
`
`petitions and motions for joinder, the Board would provide Yissum opportunity to
`
`
`
`2
`
`
`
`IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)
`
`file an opposition to the motions for joinder. The Board also explained that,
`
`depending on the issues raised in the additional petitions, the Board may expedite
`
`the time for filing a patent owner preliminary response.
`
`
`
`
`
`PETITIONER:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`Sony-humaneyes@kenyon.com
`whanley@kenyon.com
`mcarniaux@kenyon.com
`
`
`
`PATENT OWNER:
`
`David L. McCombs
`David O’Dell
`Haynes and Boone, LLP
`David.mccombs.ipr@haynesboone.com
`David.odell.ipr@haynesboone.com
`
`Robert Gerrity
`William Nelson
`Tensegrity Law Group, LLP
`Robert.gerrity@tensegritylawgroup.com
`William.nelson@tensegritylawgroup.com
`
`
`
`
`3
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