`Tel: 571-272-7822
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` Paper 29
`
` Entered: October 25, 2013
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`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)
`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
`
`
`1 IPR2013-00326 has been joined with IPR2013-00218 and IPR2013-00327 has
`been joined with IPR2013-00219. 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.
`
`
`
`
`IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)
`
`
`On October 23, 2013, the initial conference call2 was held between counsel
`for the respective parties and Judges Medley, Easthom, and Arpin.
`
`
`Motions List
`In preparation for the initial call, both parties filed a list of proposed motions
`in each proceeding. Papers 21 and 22.3 Counsel for Patent Owner confirmed that
`Patent Owner does not seek authorization to file any motions at this time.
`As discussed, if Patent Owner determines that it will file a motion to amend,
`Patent Owner must arrange a conference call soon thereafter with the Board and
`opposing counsel to discuss the proposed motion to amend.
`
`Motion to Exclude
`On its list, Petitioner indicates that it may file a motion to exclude. Paper 22
`
`
`at 1.
`
`The parties were reminded that a motion to exclude is available to a party
`wishing to challenge the admissibility of evidence and to preserve an objection
`made previously. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`48767 (Aug. 14, 2012). A party following these guidelines may file a motion to
`exclude without prior authorization from the Board. The rule specifies as much
`and explains that a motion to exclude must identify the objections in the record and
`
`
`2 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).
`3 The motions lists are identical for the two cases. For purposes of this order, we
`2
`
`
`
`
`
`IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)
`
`must explain the objections. 37 C.F.R. § 42.64(c). Therefore, no authorization at
`this time is required.
`
`
`Motion to Submit Supplemental Information
`Petitioner seeks authorization to file a motion to submit supplemental
`
`information. Paper 22 at 1. Counsel for Petitioner explained that one of
`Petitioner’s witnesses, Dr. Kouichi Matsuda, may not be available for cross-
`examination. Due to that uncertainty, Petitioner seeks to submit testimony from
`Prof. Kenichi Okada to provide similar testimony as that of Dr. Matsuda as to the
`public accessibility of Kawakita — a reference at issue in the trial.
`
`As discussed, the request is premature. Patent Owner may not challenge the
`public accessibility of Kawakita in its patent owner response. Accordingly, there
`may be no occasion to cross-examine Dr. Matsuda. For these reasons, Petitioner is
`not authorized to file a motion to submit supplemental information at this time.
`
`Schedule
`Counsel for the respective parties indicated that they have no issues with the
`Scheduling Order entered September 23, 2013.
`
`
`
`
`reference papers filed in IPR2013-00218.
`3
`
`
`
`
`
`IPR2013-00218 (Patent 6,665,003 B1)
`IPR2013-00219 (Patent 7,477,284 B2)
`
`
`Settlement
`There was no report of settlement.
`
`
`Order
`
`It is
`ORDERED that no motions are authorized at this time.
`
`
`
`PETITIONER:
`
`Walter Hanley
`Michelle Carniaux
`Kenyon & Kenyon, LLP
`whanley@kenyon.com
`mccarniaux@kenyon.com
`Sony-humaneyes@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
`4
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