Trials@ uspto.gov
`571-272-7822
`
`
`
`IPR2013-00593, Paper 29
`IPR2013-00594, Paper 22
`IPR2013-00597, Paper 20
`IPR2013-00598, Paper 26
`Entered April 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`v.
`BLACK HILLS MEDIA, LLC
`Patent Owner
`____________
`
`Case IPR2013-00593
`Patent 8,045,952 B2
`Case IPR2013-00594
`Patent 8,050,652 B2
`Case IPR2013-00597
`Patent 8,230,099 B2
`Case IPR2013-00598
`Patent 8,214,873 B21
`____________
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`PETER P. CHEN, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`1 This summary is identical in the listed cases. We exercise our discretion to issue
`a single paper to be filed in each case. The parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`IPR2013-00593, Paper 29
`IPR2013-00594, Paper 22
`IPR2013-00597, Paper 20
`IPR2013-00598, Paper 26
`Entered April 23, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA
`Petitioner
`v.
`BLACK HILLS MEDIA, LLC
`Patent Owner
`____________
`
`Case IPR2013-00593
`Patent 8,045,952 B2
`Case IPR2013-00594
`Patent 8,050,652 B2
`Case IPR2013-00597
`Patent 8,230,099 B2
`Case IPR2013-00598
`Patent 8,214,873 B21
`____________
`
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`PETER P. CHEN, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`1 This summary is identical in the listed cases. We exercise our discretion to issue
`a single paper to be filed in each case. The parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`
`Case: IPR2013-00593; -00594; -00597;-00598
`Patent: 8,045,952 B2; 8,050,652 B2; 8,230,099 B2; 8,214,873 B2
`
`
`
`An initial conference in the subject proceedings was held on April 22, 2014.
`Yamaha Corporation of America (“Petitioner”) was represented by David Fehrman
`and Mehran Arjomand. Black Hills Media, LLC (“Patent Owner”) was
`represented by, Thomas Engellenner, and Lana Gladstein. The following subjects
`were discussed during the conference:
`Related Matters
`Patent Owner advised that there are no reexamination or reissue proceedings
`concerning the patents which are challenged in the subject proceedings.
`The parties advised that in the action identified in the Petition and
`Mandatory Notices as pending at the International Trade Commission, the hearing
`has occurred and the Initial Determination is pending. The parties also advised
`that cases pending in the district courts for the Eastern District of Texas and the
`District of Delaware are stayed pending a decision in the case before the
`International Trade Commission. The parties also advised that cases pending in
`the Central District of California are the subject of a Motion to Stay, which has not
`yet been decided.
`Scheduling Order
`The parties advised that they are consulting about adjusting DATES 1-3 of
`the Scheduling Order and requested authorization to file a Motion to Amend 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,
`as provided in the Scheduling Order, by filing an appropriate notice with the
`Board. The parties may not stipulate to any other changes to the Scheduling Order.
`If the parties wish to propose any other changes to the Scheduling Order, they must
`request a conference with the Board.
`
`
`
`2
`
`
`
`Case: IPR2013-00593; -00594; -00597;-00598
`Patent: 8,045,952 B2; 8,050,652 B2; 8,230,099 B2; 8,214,873 B2
`
`
`
`
`Protective Order
`The parties have not discussed a protective order for this proceeding. No
`protective order has been entered. 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
`have agreed to a proposed protective order, including the Board’s default
`protective order, they should file a signed copy of the proposed protective order
`with the motion to seal. If the parties 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.
`Initial Disclosures and Discovery
`The parties have not stipulated to any initial disclosures at this time. 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, 37 C.F.R.
`§ 37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48,767. There are no
`discovery issues pending at this time.
`Each party expects to depose experts and affiants supporting the opposing
`party. The parties are reminded of the provisions for taking testimony found at 37
`
`
`
`3
`
`
`
`Case: IPR2013-00593; -00594; -00597;-00598
`Patent: 8,045,952 B2; 8,050,652 B2; 8,230,099 B2; 8,214,873 B2
`
`
`
`C.F.R. § 42.53 and the Office Trial Practice Guide at 77 Fed. Reg. at 48,772, App.
`D.
`
`Motions
`Prior to the initial conference, the parties indicated that at this time they do
`not anticipate filing motions, other than those listed in the Scheduling Order. There
`are currently no motions to be addressed by the Board.
`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.
`Although prior Board authorization is not required for the Patent Owner to
`file one motion to amend the patent by cancelling or substituting claims, we
`remind Patent Owner of the requirement to request a conference with the Board
`before filing a motion to amend. 37 C.F.R. § 42.121(a). The conference should
`take place at least two weeks before filing the motion to amend. The Board takes
`this opportunity to remind the Patent Owner that a motion to amend must explain
`in detail how any proposed substitute claim obviates the grounds of unpatentability
`authorized in this proceeding, and clearly identify where the corresponding written
`description support in the original disclosure can be found for each claim added. 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, Patent
`Owner is directed to several 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
`
`
`
`4
`
`
`
`Case: IPR2013-00593; -00594; -00597;-00598
`Patent: 8,045,952 B2; 8,050,652 B2; 8,230,099 B2; 8,214,873 B2
`
`
`
`(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, IPR2013-00423, Paper
`No. 27 (March 7, 2014).
`Settlement
`The parties stated that there are no immediate settlement prospects that
`would affect these proceedings.
`
`
`PETITIONER:
`
`David L. Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
`
`
`
`PATENT OWNER:
`
`Theodosios Thomas
`BLACK HILLS MEDIA, LLC
`ted.thomas@sceneralabs.com
`
`Thomas Engellenner
`Reza Mollaaghababa
`Lana Gladstein
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`mollaaghababar@pepperlaw.com
` gladsteinl@pepperlaw.com
`
`
`
`
`
`
`5
`
`
`
`Case: IPR2013-00593; -00594; -00597;-00598
`Patent: 8,045,952 B2; 8,050,652 B2; 8,230,099 B2; 8,214,873 B2
`
`
`
`
`
`
`
`6
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