`Tel: 571-272-7822
`
`
`
`
`
`Paper 16
`Entered: August 1, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GREENE’S ENERGY GROUP, LLC, INC.
`Petitioner
`
`v.
`
`OIL STATES ENERGY SERVICES, LLC,
`Patent Owner
`_______________
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`_______________
`
`
`Before SCOTT E. KAMHOLZ, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`A conference call with the parties was held on July 29, 2014 to
`discuss Patent Owner’s request for authorization to file a motion for
`additional discovery. During the call, Patent Owner explained that it intends
`to file a motion to amend claims, and that it seeks discovery from Petitioner
`relevant to secondary considerations of nonobviousness that Patent Owner
`intends to argue in support of patentability of the amended claims.
`Petitioner opposed the request on the ground that it cannot respond to the
`motion for additional discovery meaningfully without knowing precisely
`what claim amendments Patent Owner will propose.
`Upon consideration of the parties’ positions, it is hereby
`ORDERED that Patent Owner is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2) by August 8, 2014,
`limited to eight pages;
`FURTHER ORDERED that Patent Owner shall attach to the motion
`an appendix, not counting toward the page limit, that contains the proposed
`claim amendments, including markings to show changes made relative to the
`claims sought to be substituted;
`FURHTER ORDERED that Petitioner is authorized file an opposition
`to the motion by August 15, 2014, also limited to eight pages; and
`FURTHER ORDERED that no reply to the opposition is authorized.
`
`
`
`
`
`
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00216
`Patent 6,179,053 B1
`
`For PETITIONERS:
`
`John Feldhaus
`Andrew Cheslock
`FOLEY & LARDNER LLP
`jfeldhaus@foley.com
`acheslock@foley.com
`
`
`For PATENT OWNER:
`
`C. Erik Hawes
`Archis V. Ozarkar
`MORGAN, LEWIS & BOCKIUS LLP
`ehawes@morganlewis.com
`nozarkar@morganlewis.com
`
`
` 3
`
`
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`
`
`
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