Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 14
`Date Entered: March 28, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WINTEK CORPORATION
`Petitioner
`
`v.
`
`TPK TOUCH SOLUTIONS
`Patent Owner
`____________
`
`Case IPR2013-00567
`Patent 8,217,902
`____________
`
`
`
`
`Before JOSIAH C. COCKS, RICHARD E. RICE, and ADAM V. FLOYD
`Administrative Patent Judges.
`
`
`
`
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
` Paper No. 14
`Date Entered: March 28, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WINTEK CORPORATION
`Petitioner
`
`v.
`
`TPK TOUCH SOLUTIONS
`Patent Owner
`____________
`
`Case IPR2013-00567
`Patent 8,217,902
`____________
`
`
`
`
`Before JOSIAH C. COCKS, RICHARD E. RICE, and ADAM V. FLOYD
`Administrative Patent Judges.
`
`
`
`
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2013-00567
`Patent 8,217,902
`
`
`1. Introduction
`On March 27, 2014, an initial conference call in IPR2013-00567, which
`involves U.S. Patent No. 8, 217,902 (the “’902 patent”), was conducted between
`respective counsel for the parties and Judge Cocks. Petitioner, Wintek Corporation
`(“Wintek”), was represented by Joseph Palys and Naveen Modi. Patent Owner,
`TPK Touch Solutions (“TPK”), was represented by Joseph Richetti. The purpose
`of the call was to determine if the parties have any issues concerning the
`Scheduling Order (Paper 11) and to discuss any motions contemplated by the
`parties. Prior to the call, Wintek filed a paper indicating that it does not
`contemplate filing any motions at this time. Paper 12. TPK filed a paper
`indicating that it may file a motion to amend. Paper 13.
`Counsel for Wintek represented that it had arranged for a court reporter to be
`present on the call. The Board indicated that, when available, a transcript of the
`call should be filed in this inter partes review proceeding as an exhibit.
`
`2. Related Matters
`The parties have identified the following related matters involving the ’902
`patent; an ex parte reexamination (Control No. 90/012,869), and litigation filed on
`May 15, 2013 in the North District of California (case no. 3:13-cv-2218). A joint
`motion to stay the ex parte reexamination is pending in this inter partes review.
`The Board indicated that the motion would be decided in a separate paper. The
`parties indicated that litigation is pending and has entered a Discovery phase.
`During the call, counsel for Wintek indicated that it had recently filed an
`additional Petition directed to claims of the ’902 patent and that the Petition
`included a motion for joinder in connection with this inter partes review, IPR2013-
`00567, as well as related proceeding, IPR2013-00568. The Board stated that
`
`
`
`2
`
`
`
`Case IPR2013-00567
`Patent 8,217,902
`
`discussion of joinder of a separate inter partes proceeding for which trial has not
`been instituted is premature in connection with this initial conference call.
`
`3. Scheduling Order
`Neither party indicated any issues with respect to the Scheduling Order. The
`parties are reminded that, without obtaining prior authorization from the Board,
`they may stipulate to different dates for DATES 1-3 by filing an appropriate notice
`with the Board. The parties may not stipulate to any other changes to the
`Scheduling Order.
`
`4. Protective Order
`The parties have not discussed a protective order at this time and do not
`anticipate needing a protective order. No protective order has been entered.
`Should circumstances change, the parties are reminded of the requirement for a
`protective order when filing a Motion to Seal. 37 C.F.R. § 42.54. If the parties
`choose to propose a protective order other than or departing from the default
`Standing Protective Order, Office Trial Practice Guide, 77 Fed. Reg. 48,756,
`App. B (Aug. 14, 2012), they must submit a joint, proposed protective order,
`accompanied by a red-lined version based on the default protective order in
`Appendix B to the Board’s Office Patent Trial Practice Guide. See id. at 48,769.
`
`5. Discovery
`The parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-
`52 and Office Trial Practice Guide. See 77 Fed. Reg. at 48,761-2. Discovery
`requests and objections are not to be filed with the Board without prior
`authorization. If the parties are unable to resolve discovery issues between them,
`the parties may request a conference with the Board. A motion to exclude, which
`does not require Board authorization, must be filed to preserve any objection. See
`
`
`
`3
`
`
`
`Case IPR2013-00567
`Patent 8,217,902
`
`37 C.F.R. § 37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48,767. Counsel
`for TPK indicated that there is possibility of a dispute between the parties as to a
`need for additional discovery in this proceeding, but that the parties had not yet
`discussed the matter between them. At this time, there are no discovery issues
`pending for resolution by the Board.
`Each party may depose experts and affiants supporting the opposing party.
`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
`§ 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48,772, App. D.
`
`6. Motions
`The parties are reminded that, except as otherwise provided in the Rules,
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
`party seeking to file a motion should request a conference to obtain authorization
`to file the motion. No motions are authorized in this proceeding at this time.
`
`7. Motion to Amend
`Although TPK may file one motion to amend the patent by cancelling or
`
`substituting claims without Board authorization, TPK must confer with the Board
`before filing a motion to amend. 37 C.F.R. § 42.121(a). During the call, TPK
`indicated that its contemplation of an amendment is only preliminary at this stage.
`The Board informed the parties that this initial conference call does not satisfy
`TPK’s obligation to confer with the Board prior to filing a motion to amend.
`
`The Board takes this opportunity to remind TPK that in filing a motion to
`amend, as the moving party, it bears the burden of proof in establishing entitlement
`for the requested relied. See 37 C.F.R. § 42.20(c). The Board advised TPK that a
`motion to amend must explain in detail how any proposed substitute claim obviates
`the grounds of unpatentability authorized in this proceeding, explain how any
`
`
`
`4
`
`
`
`Case IPR2013-00567
`Patent 8,217,902
`
`substitute claim is patentable generally over the prior art known to the Patent
`Owner, and clearly identify where the corresponding written description support in
`the original disclosure can be found for each substitute claim. If the motion to
`amend includes a proposed substitution of claims beyond a one-for-one
`substitution, the motion must explain why more than a one-for-one substitution of
`claims is necessary.
`
`For further guidance regarding these requirements, TPK is directed to prior
`Board decisions concerning motions to amend, including Nichia Corporation v.
`Emcore Corporation, IPR2012-00005, Paper No. 27 (June 3, 2013); Idle Free
`Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 (June 11, 2013),
`Paper No. 66 (January 7, 2014); ZTE Corp. v. ContentGuard Holdings, IPR2013-
`00136, Paper 33 (November 7, 2013); Invensense, Inc. v. STMicroelectronics, Inc.,
`IPR2013-00241, Paper No. 21 (January 9, 2014); and Toyota Motor Corp. v.
`American Vehicular Sciences LLC, IPR2013-00419, Paper 32 (March 7, 2014).
`
`8. Settlement
`The parties stated that there is no immediate prospect of settlement that will
`affect the conduct of this proceeding.
`
`5
`
`
`
`
`
`
`
`Case IPR2013-00567
`Patent 8,217,902
`
`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`FINNEGAN, HENDERSON, FARABOW
`GARRETT & DUNNER, L.L.P.
`joseph.palys@finnegan.com
`naveen.modi@finnegan.com
`
`PATENT OWNER:
`
`Joseph J. Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
`
`
`
`
`
`6
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