Trials@uspto.gov
`571-272-7822
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` Paper 15
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`Date: March 20, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`
`
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`571-272-7822
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` Paper 15
`
`Date: March 20, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner
`
`v.
`
`DESTINATION MATERNITY CORPORATION,
`Patent Owner
`
`
`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
`
`On March 13, 2014, an initial conference call was held among counsel for
`
`Petitioner, Target Corporation, counsel for Patent Owner, Destination Maternity
`
`Corporation, and Judges Bisk, Fitzpatrick, and Weatherly.
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`
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`Both parties filed lists of proposed motions in each proceeding prior to the
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`call. See IPR2013-00532 Papers 13, 14; IPR2013-00533 Papers 14, 15.
`
`I. Motion to Amend
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`Patent Owner indicated that it may file a motion to amend. Patent Owner is
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`reminded that, unlike a challenge of a patented claim, where the burden is on the
`
`petitioner to demonstrate unpatentability, in a motion to amend, the burden is on
`
`the patent owner to demonstrate patentability. During the call, we directed the
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`parties to the discussion in Idle Free Systems, Inc. v. Bergstrom, Inc. for the
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`requirements of a motion to amend claims. See Decision—Motion to Amend
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`Claims, IPR2012-00027, Paper 26 (―Idle Free‖). Patent Owner should review that
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`discussion prior to filing a motion to amend.
`
`Although a patent owner is authorized by statute to file one motion to amend
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`during an inter partes review, see 35 U.S.C. § 316(d), it first must confer with the
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`Board. See 37 C.F.R. § 42.121(a). Patent Owner has met its obligation to confer.
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`II. Motions to Seal and for Protective Order
`
`Both parties list possible motions to seal and for a protective order. The
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`Board does not enter a protective order automatically. The parties were advised
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`that, if the need does arise for a protective order, the parties should first confer,
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`prepare a joint stipulated protective order, and seek authorization to file a motion
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`for entry of the proposed order, which motion should indicate clearly what, if
`
`2
`
`
`
`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
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`anything, is different between the proposed order and the model protective order
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`set forth in the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,771
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`(Aug. 14, 2012).
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`III. Motion to Exclude Evidence
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`Both parties indicated they may file a motion to exclude evidence. The
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`deadline for doing so is DUE DATE 4, currently September 2, 2014. IPR2013-
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`00532 Paper 11 (―Scheduling Order‖), 5.1
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`IV. Motion to Modify Schedule
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`Patent Owner indicated it may seek to file a ―motion for observation on the
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`dates set forth in the scheduling order,‖ but indicated that it did not have any
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`problem with the due dates set forth in the scheduling order. We remind the
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`parties that they may stipulate to different dates for DUE DATES 1–3 (earlier or
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`later, but no later than DUE DATE 4). See Scheduling Order 2. A notice of the
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`stipulation, specifically identifying the changed due dates, must be promptly filed.
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`The parties may not stipulate to an extension of DUE DATES 4–7. See id.
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`V. Motions to Consolidate
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`Petitioner indicated that it may seek to file a motion to consolidate IPR2013-
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`00532 with IPR2013-00533, because both cases involve the same patent and the
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`same parties. Patent Owner presently objects to consolidation, at least in part,
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`because Patent Owner would be limited to filing a single Patent Owner Response.
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`
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`1 IPR2013-00533 Paper 12.
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`3
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`
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`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
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`Also, Petitioner indicated that it would file imminently a petition for a third
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`inter partes review of the same patent along with a motion for joinder under 37
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`C.F.R. § 42.122(b). Such a request for joinder will be considered only if trial is
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`instituted. Further, we informed the parties that, due to scheduling constraints, it
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`may be impractical to consolidate a third proceeding filed more than six months
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`after the first two.
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`VI.
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` Motions for Discovery
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`Although both parties list motions for discovery and/or additional discovery
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`in their proposed motions lists, during the call, they indicated that no discovery
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`dispute currently exists, and they are not contemplating such motions at this time.
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`VII. Motion for Observations on Cross-Examination
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`Patent Owner indicated that it may want to file observations on cross-
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`examination of a Petitioner reply witness. We advised Patent Owner to seek
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`authorization at the appropriate time (i.e.., promptly after Petitioner’s reply is filed)
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`and if circumstances support the request (i.e., if Petitioner submits declaration
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`testimony in its reply).
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`VIII. Requests for Oral Hearing
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`Both parties indicated they may file a paper requesting oral argument. The
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`deadline for doing so is DUE DATE 4, currently September 2, 2014. Scheduling
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`Order 5.
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`4
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`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
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`IX. Motion to Submit Supplemental Information
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`Petitioner indicated it may seek to file a motion to submit supplemental
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`information such as deposition transcripts and exhibits from a related lawsuit. The
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`Board advised that, before seeking to do so, it should consider whether such
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`documents, to the extent they are relevant, could be submitted as exhibits to a
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`paper (e.g., Petitioner’s reply, which is currently due by July 14, 2014).
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`Also, pursuant to a prior order,2 two deposition transcripts from the related
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`lawsuit have already been filed. However, they will be expunged as they are
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`labeled Exhibits 1 and 2. Either party is authorized to re-file the exhibits, as
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`properly labeled. Thus, Petitioner may file them using the applicable numbers
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`from the 1000 series, and Patent owner may file them using the applicable numbers
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`from the 2000 series. Alternatively, the parties may agree to file them using
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`Exhibit 3001 and Exhibit 3002. Because no paper currently refers to those
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`exhibits, however, the parties may also choose not to re-file those exhibits at this
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`time.
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`
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`Accordingly, it is
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`ORDERED that Exhibits 1 and 2 are expunged.
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`2 IPR2013-00532 Paper 9; IPR2013-00533 Paper 10.
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`5
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`Case IPR2013-00532
`Case IPR2013-00533
`Patent RE43,531 E
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`For PETITIONER:
`
`Norman Hedges
`norman.hedges@faegrebd.com
`
`Trevor Carter
`trevor.carter@faegrebd.com
`
`Daniel Lechleiter
`daniel.lechleiter@faegrebd.com
`
`For PATENT OWNER:
`
`Paul Taufer
`paul.taufer@dlapiper.com
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`Michael Burns
`michael.burns@dlapiper.com
`
`Stuart Pollack
`stuart.pollack@dlapiper.com
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`
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`6
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