`571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 14
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`
`
` Entered: February 25, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNY TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`PHISON ELECTRONICS CORP.
`Patent Owner
`____________
`
`Case IPR2013-00472
`Patent 7,518,879
`____________
`
`
`Before KEVIN F. TURNER, STEPHEN C. SIU, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`An initial conference call in the above proceeding was held on
`February 21, 2014, between respective counsel for Petitioner and Patent
`Owner, and Judges Turner, Siu, and Elluru. The purpose of the call was to
`discuss any proposed changes to the Scheduling Order (Paper 11) and any
`motions that the parties intend to file. Petitioner filed a proposed motions
`list, including motions for pro hac vice admission. As the panel indicated on
`the initial conference call, no prior authorization is required for motions for
`pro hac vice admission. Once filed, the panel will consider the motions in
`due course.
`The parties also acknowledged that no protective orders are presently
`in place, that there are no initial disclosures, and that no additional discovery
`requests are being made at this time. The parties confirmed that no
`settlement discussions have occurred with respect to this proceeding, but
`acknowledged that the pending lawsuit, Phison Electronics Corp. v. PNY
`Technologies, Inc., Civil Action No. 1:12-cv-01478-GMS (D. Del.), could
`have ongoing mediation efforts. The Board acknowledged the filing of a
`request for rehearing (Paper 12) by Patent Owner, which will be decided in
`due course.
`Counsel for Patent Owner indicated that Patent Owner did not intend
`to file a motion to amend at this time. The Board directs the attention of the
`parties to Nichia Corporation v. Emcore Corporation, IPR2012-00005,
`Paper Nos. 27 and 68, Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-
`00027, Paper Nos. 26 and 66, and ZTE Corporation and ZTE (USA) Inc. v.
`Contentguard Holdings, Inc., IPR2013-00136, Paper No. 33, which discuss
`
`2
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`the requirements of a motion to amend claims. If the Patent Owner decides
`to file a motion to amend claims, it must initiate a conference call with the
`Board prior to such filing to confer about the intended motion.
`Patent Owner inquired about the possibility of joining the instant
`proceeding with a proceeding for PNY Technologies, Inc. v. Phison
`Electronics Corp., IPR2014-00150, should a trial be instituted in the latter,
`where the latter involves the same parties, covering the same patent, albeit
`with slightly different sets of claims subject to review. In the latter, Patent
`Owner’s preliminary response is due February 27, 2014, and Patent Owner
`inquired whether it would be appropriate to file a motion for joinder, per 35
`U.S.C. § 325(c), along with any preliminary response. The panel indicated
`that some type of consolidation of the proceedings had been discussed by the
`panel. The panel also indicated that no decision on institution of the latter
`proceeding would occur until after the Patent Owner had filed a preliminary
`response in the instant proceeding, or the due date for such a filing had
`elapsed. The Board authorizes the filing of a motion for joinder, which can
`be either a motion filed by one party, or can be a joint motion for joinder. If
`the motion for joinder is a joint motion, the Board also authorizes the filing
`of a proposed revised scheduling order, which could be used in the joined
`proceeding.
`The Board reminds the parties that prior authorization is required for
`all motions. See 37 C.F.R. § 42.20(b). The Board is available for additional
`conference calls should the need arise due to issues that the parties are not
`able to resolve on their own.
`
`3
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`
`Order
`
`
`
`It is
`ORDERED that all due dates set in the Scheduling Order dated
`February 4, 2014 (Paper 11), remain unchanged;
`FURTHER ORDERED that Patent Owner is authorized to file a
`motion for joinder with IPR2014-00150 with its Patent Owner preliminary
`response, or Petitioner is authorized to file a motion for joinder with
`IPR2014-00150, or the parties are authorized to file a joint motion for
`joinder with IPR2014-00150; and
`FURTHER ORDERED that a joint motion for joinder, if agreed to
`and filed by both parties, and may be accompanied by a proposed revised
`scheduling order, proposing due dates for such a joined proceeding.
`
`
`
`4
`
`
`
`Case IPR2013-00472
`Patent 7,518,879
`
`For PETITIONER:
`Mark E. Nikolsky
`Sanjiv M. Chokshi
`McCARTER & ENGLISH LLP
`mnikolsky@mccarter.com
`schokshi@mccarter.com
`
`
`For PATENT OWNER:
`Joshua A. Griswold
`David M. Hoffman
`FISH & RICHARDSON P.C.
`griswold@fr.com
`hoffman@fr.com
`IPR23490-0008IP1@fr.com
`PTABInbound@fr.com
`
`
`
`5
`
`
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