Trials@uspto.gov
`571-272-7822
`
`Paper 24
`Date: February 4, 2014
`
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION.
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC.
`Patent Owner.
`____________
`
`Case IPR2013-00412
`Patent 6,738,697
`____________
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
`
`
`
`
`
`571-272-7822
`
`Paper 24
`Date: February 4, 2014
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION.
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC.
`Patent Owner.
`____________
`
`Case IPR2013-00412
`Patent 6,738,697
`____________
`
`
`Before JAMESON LEE, TREVOR M. JEFFERSON,
`and BARBARA A. PARVIS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.05
`
`
`
`
`
`
`
`IPR2013-00412
`Patent 6,738,697
`
`
`
`Introduction
`
`
`
`
`
`On February 3, 2014, an initial telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Jefferson, and Parvis. Both
`
`parties filed a list of proposed motions. Paper 22 (Patent Owner’s list); Paper 23
`
`(Petitioner’s list).
`
`Discussion
`
`
`
`The sole item listed on Petitioner’s list of proposed motions is a motion to
`
`extend the deadline for submitting supplemental evidence, under 37 C.F.R.
`
`§ 42.64(b)(2), in response to Patent Owner’s objection to Petitioner’s evidence.
`
`However, counsel for both parties indicate jointly that they have resolved the issue
`
`by agreeing that such supplemental evidence will be due on February 18, 2014.
`
`The Board approves of that agreement by the parties. Therefore, it is not necessary
`
`for Petitioner to file a motion for such extension.
`
`
`
`The parties indicated that they have stipulated to different Due Dates 1-3.
`
`The Board instructed that the stipulation be filed. However, none of the stipulated
`
`Due Dates 1-3 should extend beyond the original Due Date 4, July 10, 2014.
`
`
`
`Item 1 on Patent Owner’s list of proposed motions pertains to a proposed
`
`motion for modification of Due Dates 1-3 in the Scheduling Order dated
`
`January 13, 2014 (Paper 20). The proposed motion is moot in light of the parties’
`
`agreement to different stipulated Due Dates 1-3.
`
`
`
`Item 2 on Patent Owner’s list pertains to a proposed motion for additional
`
`discovery. Based on discussions in the conference call, it is evident that that
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`proposed motion is premature at this time. Counsel for Patent Owner will contact
`
`the Board at an appropriate time when he has more specifics with regard to the
`
`material Patent Owner seeks to discover. The parties should note IPR2012-00001
`
`2
`
`
`
`
`IPR2013-00412
`Patent 6,738,697
`
`
`(Paper 20) with regard to the factors applicable for determining appropriateness of
`
`
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`additional discovery.
`
`
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`Item 3 on Patent Owner’s list pertains to a potential motion to exclude
`
`evidence. The matter is premature. The Board also noted that a party does not
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`need prior authorization from the Board to file a motion to exclude evidence.
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`Motions to exclude evidence are provided for in the Scheduling Order. Also, the
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`Board advised counsel for both parties that the motion to exclude evidence is not
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`provided as a vehicle via which to contend that any argument or evidence in
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`support of a reply exceeds the proper scope of a reply. Accordingly, neither party
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`is authorized to include in a motion to exclude evidence an assertion that a reply
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`argument or evidence in support of a reply exceeds the proper scope of a reply.
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`
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`Item 4 on Patent Owner’s list pertains to a potential motion to amend claims.
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`Based on discussions in the conference call, this matter is premature, as Patent
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`Owner does not yet know in what way it would seek to amend claims. In any
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`event, Patent Owner does not need authorization from the Board to file a first
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`motion to amend claims. Under 37 C.F.R. § 1.121(a), however, Patent Owner is
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`required to confer with the Board prior to filing such an amendment. In that
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`connection, because the discussion is premature, this conference call does not
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`satisfy the requirement “to confer” under 37 C.F.R. § 1.121(a).
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`
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`Item 5 on Patent Owner’s list pertains to a potential motion to substitute
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`Lead and/or Back-Up Counsel. The Board explained that a party may re-designate
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`lead or back-up counsel without need of a formal motion, subject, however, to the
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`requirements that (1) lead counsel must be a registered practitioner, and (2) a non-
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`registered practitioner may not be designated as counsel unless a motion for pro
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`hac vice admission of the non-registered practitioner has been granted. Note
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`3
`
`
`
`
`IPR2013-00412
`Patent 6,738,697
`
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`further that counsel may not withdraw from this proceeding unless the Board has
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`
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`authorized the withdrawal. 37 C.F.R. § 42.10(e).
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`
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`Finally, counsel for Patent Owner indicated that he would like to withdraw
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`the objections which note that Petitioner’s evidence is deficient on the merits on
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`substantive issues. The Board approved and granted the withdrawal of such
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`objections. Given that the noted objections are withdrawn, counsel for Petitioner
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`agreed not to submit supplemental evidence which add to the substantive merit of
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`the evidence relied on in the petition.
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`
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`The Board asked counsel for both parties to contemplate whether the final
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`hearing for this trial may be conducted as part of a joint final hearing with
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`IPR2013-00413, IPR2013-00414, IPR2013-00415, IPR2013-00416, and
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`IPR2013-00417, on a single day, and to inform the Board accordingly at an
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`appropriate time.
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`It is
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`Order
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`ORDERED that the sole item on Petitioner’s list of proposed motions is
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`
`
`
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`dismissed as moot, and that the due date with regard to Petitioner’s supplemental
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`evidence under 37 C.F.R. § 42.64(b)(2) is reset to February 18, 2014;
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`
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`FURTHER ORDERED that all of the items on Patent Owner’s list of
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`proposed motions are dismissed as moot, premature, or unnecessary; and
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`
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`FURTHER ORDERED that Patent Owner should initiate a conference call
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`with the Board to “confer” about a motion to amend claims at least one week prior
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`to the filing of the motion to amend claims.
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`
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`4
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`
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`IPR2013-00412
`Patent 6,738,697
`
`
`For Petitioner:
`
`A. Antony Pfeffer
`apfeffer@kenyon.com
`
`For Patent Owner:
`
`Thomas Wimbiscus
`Scott McBride
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
`5
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`
`
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