Trials@uspto.gov
`571-272-7822
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` Paper 29
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`Entered: April 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L. M. ERICSSON
`Patent Owner
`
`
`Case IPR2013-00601 (Patent 6,772,215)
`Case IPR2013-00602 (Patent 6,466,568)
`Case IPR2013-00636 (Patent 6,424,625) 1
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
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` Paper 29
`
`
`Entered: April 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADCOM CORPORATION
`Petitioner
`
`v.
`
`TELEFONAKTIEBOLAGET L. M. ERICSSON
`Patent Owner
`
`
`Case IPR2013-00601 (Patent 6,772,215)
`Case IPR2013-00602 (Patent 6,466,568)
`Case IPR2013-00636 (Patent 6,424,625) 1
`
`
`
`Before KARL D. EASTHOM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2013-00601, -00602, -00636
`Patent 6,772,215; 6,466,568; 6,424,625
`
`
`An initial conference call in the above proceeding was held on April
`
`1, 2014, between respective counsel for Petitioner and Patent Owner, and
`
`Judges Easthom, Deshpande, and Clements. The following subjects were
`
`discussed during the conference:
`
`Related Matters
`
`The parties are aware of no reexamination proceedings concerning the
`
`Subject Patents. Patent Owner has asserted the Subject Patents in litigation
`
`styled Ericsson Inc., et al. v. D-LINK Corp., et al., Civil Action No. 6:10-cv-
`
`473 (E.D. Tex.). The verdict in that case is on appeal to the Federal Circuit
`
`in an appeal styled Ericsson Inc., et al. v. D-LINK Corp., et al., Case Nos.
`
`2013-1625, -1631, -1632, and -1633.
`
`Scheduling Order
`
`Neither party seeks changes to the Scheduling Order. Patent Owner
`
`indicated that it has filed Writs of Mandamus with the Federal Circuit
`
`regarding the Board’s Order denying additional discovery, and that those
`
`may impact the schedule in the future.
`
`To the extent that issues arise with DATES 1-3, 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
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`parties may not stipulate to any other changes to the Scheduling Order.
`
`Motions
`
`Prior to the conference, Patent Owner filed a list of proposed motions.
`
`The parties indicated that there are currently no motions to be addressed.
`
`2
`
`
`
`Case IPR2013-00601, -00602, -00636
`Patent 6,772,215; 6,466,568; 6,424,625
`
`
`Patent Owner indicated that it may file a Motion to Amend. The
`
`Board takes this opportunity to remind Patent Owner that a motion to amend
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`must explain in detail how any proposed substitute claim obviates the
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`grounds of unpatentability authorized in this proceeding, and clearly identify
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`where the corresponding written description support in the original
`
`disclosure can be found for each claim added. If the motion to amend
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`includes a proposed substitution of claims beyond a one-for-one substitution,
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`the motion must explain why more than a one-for-one substitution of claims
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`is necessary. For further guidance regarding these requirements, Patent
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`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.,
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`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); and InvenSense, Inc. v. STMicroelectronics, Inc.,
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`IPR2013-00241, Paper No. 21 (January 9, 2014); Toyota Motor Corp. v.
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`American Vehicular Sciences LLC, IPR2013-00423, Paper No. 27 (March 7,
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`2014). Patent Owner has met the requirement to confer with the Board
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`before filing a motion to amend. 37 C.F.R. § 42. 121(a). However, to the
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`extent that questions arise later, we encourage Patent Owner to contact the
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`Board to arrange a call.
`
`Patent Owner also indicated that it anticipates filing a motion to
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`exclude evidence. The parties briefly explained the nature of the evidence
`
`3
`
`
`
`Case IPR2013-00601, -00602, -00636
`Patent 6,772,215; 6,466,568; 6,424,625
`
`that Patent Owner anticipates moving to exclude. Patent Owner served
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`Petitioner with its objection. Petitioner intends to respond by the deadline.
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`The parties are reminded that, except as otherwise provided in the
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`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
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`obtain authorization to file the motion. No motions are authorized in this
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`proceeding at this time, except as noted above.
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`Discovery
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`The parties are reminded of the discovery provisions of 37 C.F.R.
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`§ 42.51-52 and Office Patent Trial Practice Guide. See id. at 48,761-2.
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`Discovery requests and objections are not to be filed with the Board without
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`prior authorization. If the parties are unable to resolve discovery issues
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`between them, the parties may request a conference with the Board. A
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`motion to exclude, which does not require Board authorization, must be filed
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`to preserve any objection. See 37 C.F.R. § 37.64, Office Patent Trial
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`Practice Guide, 77 Fed. Reg. at 48,767.
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`Protective Order
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`The Board’s default protective order has been entered in this
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`proceeding.
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`Settlement
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`The parties were not aware of any immediate prospect of settlement of
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`this proceeding. In the event that the parties wish to terminate this
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`proceeding pursuant to a settlement, they should request a conference with
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`the Board.
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`4
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`
`
`Case IPR2013-00601, -00602, -00636
`Patent 6,772,215; 6,466,568; 6,424,625
`
`
`For PETITIONER:
`
`Dominic E. Massa
`Michael A. Diener
`WILMER CUTLER PICKERING HALE AND DORR LLP
`dominic.massa@wilmerhale.com
`michael.diener@wilmerhale.com
`
`For PATENT OWNER:
`
`Peter J. Ayers
`J. Christopher Lynch
`LEE & HAYES PLLC
`peter@leehayes.com
`chris@leehayes.com
`EricssonIPR2013-00601@leehayes.com
`EricssonIPR2013-00602@leehayes.com
`
`5
`
`
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