Trials@uspto.gov Paper No. 10 Paper No. 12
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`571-272-7822
`Date Entered: June 3, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
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`v.
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`EVOLUTIONARY INTELLIGENCE, LLC
`Patent Owner
`____________
`
`Case IPR2014-00086
`Patent 7,010,536
`____________
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`
`
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. McNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`McNAMARA, Administrative Patent Judge.
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`INITIAL CONFERENCE SUMMARY
`AUTHORIZATON TO CORRECT EXHIBIT 2002
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`Case IPR2014-00086
`Patent 7,010,536
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`An initial conference in IPR2014-00086, which involves U.S. Patent No.
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`7,010,536 (the “’536 Patent”), was conducted on May 23, 2014. Apple, Inc.
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`(“Petitioner”) was represented by Jeffrey Kushan. Evolutionary Intelligence, LLC
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`(“Patent Owner”) was represented by Anthony Patek. The following subjects were
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`discussed during the conference:
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`Related Matters
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`Patent Owner confirmed that there are no reexaminations of the ’536 Patent
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`underway. Patent Owner also advised that all of the lawsuits identified in the
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`Mandatory Notices are currently stayed, although the stays are not all of the same
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`duration and motions to lift the stays are pending in some of the cases.
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`Scheduling Order
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`Both parties confirmed that they seek no changes to the current Scheduling
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`Order. The parties are reminded that, without obtaining prior authorization from
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`the Board, they may stipulate to different dates for DATES 1-5, as provided in the
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`Scheduling Order, by filing an appropriate notice with the Board. The parties may
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`not stipulate to any other changes to the Scheduling Order.
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`Protective Order
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`The parties have not discussed a protective order at this time. No protective
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`order has been entered. The parties are reminded of the requirement for a
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`protective order when filing a motion to seal. 37 C.F.R. § 42.54. If the parties
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`have agreed to a proposed protective order, including the Standing Default
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`Protective Order, 77 Fed. Reg. 48756, App. B (Aug 14, 2012), they should file a
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`signed copy of the proposed protective order with the motion to seal. If the parties
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`propose a protective order other than or departing from the default Standing
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`Protective Order, Office Trial Practice Guide, id., they must submit a joint,
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`Case IPR2014-00086
`Patent 7,010,536
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`proposed protective order, accompanied by a red-lined version based on the default
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`Standing Protective Order in Appendix B to the Board’s Office Patent Trial
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`Practice Guide. See, id. at 48769.
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`Initial Disclosures and Discovery
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`The parties have not stipulated to any initial disclosures at this time. The
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`parties are reminded of the discovery provisions of 37 C.F.R. § 42.51-52 and
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`Office Trial Practice Guide. See, 77 Fed. Reg. at 48761-2. Discovery requests and
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`objections are not to be filed with the Board without prior authorization. If the
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`parties are unable to resolve discovery issues between them, the parties may
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`request a conference with the Board. A motion to exclude, which does not require
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`Board authorization, must be filed to preserve any objection. See, 37 C.F.R. §
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`37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48767. There are no discovery
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`issues pending at this time.
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`The parties are reminded of the provisions for taking testimony found at 37
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`C.F.R. § 42.53 and the Office Trial Practice Guide at 77 Fed. Reg. at 48772,
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`App. D.
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`Motions
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`Prior to the initial conference, each party filed a list of anticipated motions.
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`Petitioner indicated that, at this time, it does not plan any motions, other than those
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`in the Scheduling Order. See, Paper 11, Petitioner’s List of Proposed Motions.
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`Patent Owner indicated that it would seek discovery concerning whether any other
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`party is a real party-in-interest or a privy. See, Paper 10, Patent Owner’s List of
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`Proposed Motions. Patent Owner’s request for additional discovery is addressed in
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`a separate paper.
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`The parties are reminded that, except as otherwise provided in the Rules,
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`Board authorization is required before filing a Motion. 37 C.F.R. § 42.20(b). A
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`Case IPR2014-00086
`Patent 7,010,536
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`party seeking to file a motion should request a conference to obtain authorization
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`to file the motion. Although Patent Owner’s List of Proposed Motion indicates
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`that Patent Owner may seek the testimony of Mr. Hough in other matters, Patent
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`Owner has not yet requested authorization to file such a motion. We will take that
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`matter up if Patent Owner makes such a request.
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`Patent Owner’s List of Proposed Motions also requests permission to correct
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`Exhibit 2002, which contains pages from documents that were not intended to be
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`part of the filing. Although the matter was not discussed during the initial
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`conference, Patent Owner is authorized to move to expunge existing Exhibit 2002
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`and file a corrected Exhibit 2002.
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`No other motions are authorized in this proceeding at this time.
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`Patent Owner also indicated that it may file a motion to amend the claims of
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`the ’536 Patent Although Board authorization is not required for the Patent Owner
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`to file one motion to amend the patent by cancelling or substituting claims, we
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`remind Patent Owner of the requirement to request a conference with the Board
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`before filing a motion to amend. 37 C.F.R. § 42.121(a). The conference should
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`take place at least two weeks before filing the motion to amend. The Board takes
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`this opportunity to remind the Patent Owner that a motion to amend must explain
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`in detail how any proposed substitute claim obviates the grounds of unpatentability
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`authorized in this proceeding, and clearly identify where the corresponding written
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`description support in the original disclosure can be found for each claim added.
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`Patent Owner’s List of Proposed Motions indicates that Patent Owner’s
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`motion to amend would seek to substitute two claims for each of the amended
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`claims because of multiple dependencies on claims 1 and 2. We reminded Patent
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`Owner that if the motion to amend includes a proposed substitution of claims
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`beyond a one-for-one substitution, the motion must explain why more than a one-
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`for-one substitution of claims is necessary. This matter can be discussed further
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`during the pre-amendment conference. For further guidance regarding these
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`requirements, Patent Owner is directed to several decisions concerning motions to
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`amend, including Nichia Corporation v. Emcore Corporation, IPR2012-00005,
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`Paper No. 27 (June 3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-
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`00027, Paper No. 26 (June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp.
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`v. ContentGuard Holdings, IPR2013-00136, Paper 33 (November 7, 2013); and
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`Invensense, Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper No. 21,
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`(January 9, 2014); Toyota Motor Corp. v. American Vehicular Sciences LLC,
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`IPR2013-00423, Paper No. 27 (March 7, 2014).
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`Settlement
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`The parties stated that, although settlement discussions may occur, there is
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`no immediate prospect of settlement in this proceeding.
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`PETITIONER:
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`Jeffrey Kushan
`jkushan@sidley.com
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`PATENT OWNER
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`Anthony Patek
`pto@gutridesafier.com
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`Todd Kennedy
`todd@guttridesafier.com
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