Trials@uspto.gov Paper No. 10 IPR2014-00136, Paper 19
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`571-272-7822
`IPR2014-00139, Paper 20
`Date Entered: July 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`RELOADED GAMES, INC.
`Petitioner
`
`v.
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`PARALLEL NETWORKS LLC
`Patent Owner
`____________
`
`Case IPR2014-00136
`Patent 7,188,145 B2
`Case IPR2014-00139
`Patent 7,730,262 B21
`____________
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`HYUN J. JUNG, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
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`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`
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`1 This Order addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
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`
`

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`Case IPR2013-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
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`
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`An initial conference in IPR2014-00136 and IPR2014-00139, which involve
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`U.S. Patent No. 7,188,145 B2 (“the ’145 Patent”) and U.S. Patent 7,730,262 B2
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`(“the ’262 Patent”) was scheduled for June 3, 2014 at 11:00 a.m. Reloaded
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`Games, Inc. (“Petitioner”), which is represented by lead counsel, Eric A. Buresh,
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`appeared for the teleconference. Parallel Networks LLC (“Patent Owner”), which
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`is represented by lead counsel, Darren W. Collins, failed to call in. After
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`Petitioner’s counsel and the Board’s clerk were unable to reach Mr. Collins by
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`telephone, we recessed the initial conference at 11:10 a.m. The Board’s clerk left
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`Mr. Collins a message to contact her to reschedule the conference. In addition, we
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`asked Petitioner’s counsel to consult Patent Owner’s counsel and then propose to
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`the Board’s clerk alternate dates and times for the conference.
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`Shortly thereafter, Mr. Collins placed an unauthorized ex parte call to
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`Judge Jung’s direct line, stating that, as a result of an administrative error, he
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`could not find the passcode for the call. Mr. Collins’ ex parte communication with
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`Judge Jung was inappropriate. 37 C.F.R. § 42.5(d). We remind counsel that all
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`contact with the Board in an inter partes should be initiated through the Board’s
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`administrative channels and not with the Administrative Patent Judges.
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`The conference was rescheduled for June 18, 2014. At that time, the
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`following subjects were discussed:
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`Related Matters and Scheduling Order
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`The parties have not identified any current re-examinations, re-issue
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`applications or other proceedings in the USPTO concerning the ’145 Patent. The
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`’145 Patent is the subject of several infringement suits. The parties reported that
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`litigation in the U.S. District Court for the District of Delaware is currently stayed
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`and that a motion to lift the stay is pending.
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`2
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`

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`Case IPR2013-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
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`During the conference, Petitioner noted that it had recently filed IPR2014-
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`00950, which concerns claims of the ’145 Patent on which we did not institute a
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`trial in IPR2014-00136. Subsequent to the conference, the Board mailed a notice
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`according IPR2014-00950 a filing date of June 13, 2014. On June 13, 2014, in
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`IPR2014-00950, Petitioner also filed a motion for joinder with IPR2014-00136. In
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`view of Petitioner’s filings in IPR2014-00950, we have entered an Amended
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`Scheduling Order in IPR2014-00136. Although there is no motion for joinder with
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`IPR2014-00139, for purposes of case management, we are entering the same
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`Amended Scheduling Order in IPR2014-00139. In addition to the Amended
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`Scheduling Orders in IPR2014-00136 and IPR2013-00139, we are entering an
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`Order in IPR2014-00950 setting the date for filing a Patent Owner Preliminary
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`Response and Opposition to the Motion to Amend to July 31, 2014.
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`The Amended Scheduling Order delays the date for filing a Patent Owner
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`Response until September 30, 2014. The revised date for filing a Patent Owner
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`Response will allow Patent Owner an opportunity to file a Patent Owner
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`Preliminary Response in IPR2014-00950 and respond to Petitioner’s motion for
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`joinder. It will also allow time for us to determine whether to grant the joinder
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`motion. The Amended Scheduling Order reduces the amount of time for
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`Petitioner, who sought the joinder, to file its Reply to the Patent Owner Response
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`and adjusts other dates accordingly. The date of the oral hearing has not changed.
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`The parties are reminded that, without obtaining prior authorization from the
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`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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`3
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`

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`Case IPR2013-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
`
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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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`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
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`require 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
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`discovery issues pending at this time.
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`The parties are reminded of the provisions for taking testimony found at
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`37 C.F.R. § 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48772,
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`App. D.
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`4
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`

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`Case IPR2013-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
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`Motions
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`Prior to the initial conference, Patent Owner filed a list of anticipated
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`motions, all of which are provided for in the Scheduling Order. The parties
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`indicated that there are currently no motions to be addressed.
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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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`party seeking to file a motion should request a conference to obtain authorization
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`to file the motion. No motions are authorized in this proceeding at this time.
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` Although Board authorization is not required, Patent Owner may file one
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`motion to amend the patent by cancelling or substituting claims. We remind Patent
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`Owner of the requirement to request a conference with the Board before filing a
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`motion to amend. 37 C.F.R. § 42.121(a). The conference should take place at
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`least two weeks before filing the motion to amend. The Board takes this
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`opportunity to remind the Patent Owner that a motion to amend must explain in
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`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. If
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`the motion to amend includes a proposed substitution of claims beyond a one-for-
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`one substitution, the motion must explain why more than a one-for-one substitution
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`of claims is necessary. For further guidance regarding these requirements, Patent
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`Owner is directed to several decisions concerning motions to amend, including
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`Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27
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`(June 3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027,
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`Paper No. 26 (June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v.
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`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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`5
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`

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`Case IPR2013-00136; IPR2014-00139
`Patent 7,188,145 B2; 7,730,262 B2
`
`(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 there are no settlement discussions underway at this
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`6
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`time.
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`
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`PETITIONER:
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`Eric Buresh
`Eric.buresh@eriseip.com
`
`Mark Lang
`Mark.lang@eriseip.com
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`
`
`PATENT OWNER
`
`Darren Collins
`dwcolllins@mcguirewoods.com
`
`Robert Hilton
`rhilton@mcguirewoods.com
`
`Aaron Pickell
`apickell@mcguirewoods.com