`571-272-7822
`
`
`
` Paper 10
`
`Entered: December 20, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RICHOH AMERICAS CORPORATION and XEROX CORPORATION
`Petitioner
`v.
`
`
`
`
`
`
`
`MPHJ TECHNOLOGY INVESTMENTS, LLC
`Patent Owner
`
`Case IPR2013-00302
`Patent 7,986,426 B1
`
`
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and KARL D.
`EASTHOM, Administrative Patent Judges.
`
`
`TIERNEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2013-00302
`Patent No. 7,986,426 B1
`
`
`
`An initial conference call in the above proceeding was held on
`
`December 17, 2013, between respective counsel for Petitioner and Patent
`
`Owner, and Judges Tierney, Medley, and Easthom. The purpose of the call
`
`was to discuss any proposed changes to the Scheduling Order (Paper 9) and
`
`any motions that the parties intend to file. The following issues were
`
`discussed.
`
`
`
`1.
`
`Schedule
`
`Patent Owner and Petitioner agreed to discuss the Due Dates and
`
`possible modifications to Due Dates 1 through 3.
`
`
`
`2. Motion to Amend
`
`
`
`Counsel for Patent Owner indicated that they intend to file a motion to
`
`amend. The Board directed the parties’ attention to IPR2012-00027 (Paper
`
`26), and IPR2013-00136 (Paper 33), both of which give guidance on the
`
`proper content of a motion to amend claims. The Board explained that the
`
`Patent Owner has the burden of proof in demonstrating patentability of each
`
`proposed substitute claim. That task is different from responding to an ex
`
`parte rejection of claims by an Examiner. The Patent Owner is expected to
`
`explain the level of ordinary skill with respect to each feature it relies on for
`
`patentable distinction of the claimed invention as a whole, including
`
`providing information on whether the feature was known outside of the
`
`specific combination claimed.
`
`
`
`2
`
`
`
`Case IPR2013-00302
`Patent No. 7,986,426 B1
`
`For PETITIONER:
`
`Michael Specht
`Jason Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-PTAB@skgf.com
`jasone@PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Scott Horstemeyer
`N. Andrew Crain
`THOMAS│HORSTEMEYER, LLP
`scott.horstemeyer@thomashorstemeyer.com
`andrew.crain@thomashorstemeyer.com
`
`
`3
`
`
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