Trials@uspto.gov Paper No. 10 Paper No. 23
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`571-272-7822
`Date Entered: July 31, 2014
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, VOLVO CARS OF NORTH AMERICA, LLC, TOYOTA MOTOR NORTH
`AMERICA, INC., AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH
`AMERICA, INC., and SUBARU OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00281
`Patent 6,324,463
`_______________
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`571-272-7822
`Date Entered: July 31, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FORD MOTOR COMPANY, JAGUAR LAND ROVER NORTH AMERICA,
`LLC, VOLVO CARS OF NORTH AMERICA, LLC, TOYOTA MOTOR NORTH
`AMERICA, INC., AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH
`AMERICA, INC., and SUBARU OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00281
`Patent 6,324,463
`_______________
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
`
`
`1. Introduction
`
`On July 30, 2014, an initial conference call was conducted. Robert
`
`Steinberg represented Petitioner, Ford et al. (“Petitioner” or “Ford”). John Kasha
`
`represented Patent Owner, Cruise Control Technologies, LLC (“Patent Owner”).
`
`Judges Cocks, Jung, and Hoskins participated on behalf of the Board. The purpose
`
`of the call was to determine if the parties have any issues concerning the
`
`Scheduling Order (Paper 18) and to discuss any motions contemplated by the
`
`parties.
`
`2. Related Matters
`
`Counsel for Patent Owner indicated that U.S. Patent 6,324,463 (“the ’463
`
`patent”) is subject to a concurrent reexamination proceeding (90/012,841) before
`
`the United States Patent & Trademark Office, and that the proceeding is pending
`
`appeal to the Board.
`
`The panel was informed that all litigation involving the ’463 patent had been
`
`moved to the Easter District of Michigan from the District of Delaware, and is
`
`currently stayed.
`
`3. Scheduling Order
`
`Neither of the parties indicated any issues in connection with the Scheduling
`
`Order. During the call, the panel reminded the parties that, without obtaining prior
`
`authorization from the Board, they may stipulate to different dates for DATES 1-51
`
`by filing an appropriate notice with the Board.
`
`
`1 The parties may not stipulate to changes for any other DUE DATE.
`2
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`
`
`
`
`Case IPR2014-00281
`Patent 6,324,463
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`4. Protective Order
`
`The parties have not discussed a protective order at this time. No protective
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`order has been entered. At this time, neither party anticipated the need for a
`
`Protective Order in this proceeding. Should circumstances change, the parties are
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`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 Standing Default Protective Order, 77 Fed. Reg. 48756, App. B (Aug
`
`14, 2012), they should file a signed copy of the proposed protective order with the
`
`motion to seal. If the parties choose to propose a protective order other than or
`
`departing from the default Standing Protective Order, 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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`protective order in Appendix B to the Board’s Office Patent Trial Practice Guide.
`
`See id. at 48769.
`
`5. Discovery
`
`The parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-
`
`52 and the Office Trial Practice Guide. See 77 Fed. Reg. at 48761-2. Discovery
`
`requests and objections are not to be filed with the Board without prior
`
`authorization. The parties may request a conference with the Board if the parties
`
`are unable to resolve discovery issues between them. 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 48767. There are
`
`no discovery issues pending at this time.
`
`Each party may depose experts and affiants supporting the opposing party.
`
`The parties are reminded of the provisions for taking testimony found at 37 C.F.R.
`
`§ 42.53 and the Office Trial Practice Guide at 77 Fed. Reg. at 48772, App. D.
`
`
`
`3
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`
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`Case IPR2014-00281
`Patent 6,324,463
`
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`6. Motions
`
`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, other
`
`than as already authorized by Rule.
`
`7. Motion to Amend
`
`
`
`Although Patent Owner may file one motion to amend the patent by
`
`cancelling or substituting claims without Board authorization, Patent Owner must
`
`confer with the Board before filing a motion to amend. 37 C.F.R. § 42.121(a).
`
`Patent Owner, as the moving party, bears the burden of proof in establishing
`
`entitlement for the requested relief. See 37 C.F.R. § 42.20(c). A motion to amend
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`must explain in detail how any proposed substitute claim obviates the grounds of
`
`unpatentability authorized in this proceeding, explain how any substitute claim is
`
`patentable generally over the prior art known to the Patent Owner, and clearly
`
`identify where the corresponding written description support in the original
`
`disclosure can be found for each substitute claim.
`
`
`
`Counsel for Patent Owner expressed that he was aware of the distinction in
`
`amendment practice between inter partes review proceedings and other
`
`proceedings such as examination, reexamination, and reissue proceedings. During
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`the call, Patent Owner informed the panel that it is generally contemplating a
`
`Motion to Amend. The panel requested that the Patent Owner schedule a
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`conference call with Board and the opposing party at least one week prior to DUE
`
`DATE 1, so as to discuss issues in connection with a Motion to Amend in this
`
`proceeding and to satisfy the conferral requirement of § 42.121(a).
`
`
`
`4
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`Case IPR2014-00281
`Patent 6,324,463
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`
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`For further guidance regarding the requirements of a Motion to Amend,
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`Patent Owner is directed to prior Board decisions concerning motions to amend,
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`including Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper
`
`No. 27 (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.
`
`ContentGuard Holdings, IPR2013-00136, Paper No. 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).
`
`8. Other Matters
`
`
`
`This involved inter partes review proceeding is related to four other
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`proceedings (IPR2014-00279, -00280, -00289, and -00291), all of which are
`
`directed to the ’463 patent. During the call, counsel for Patent Owner inquired
`
`with the Board whether it was able to submit different Motions to Amend in the
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`five related proceedings. After conferring, the panel acknowledged that, given the
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`current circumstances of these proceedings, Patent Owner could submit different
`
`Motions to Amend in the five proceedings.
`
`
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`Counsel for Patent Owner also queried whether he was required to contact
`
`counsel separately for all five proceedings when attempting to confer with
`
`opposing counsel for matters such as scheduling depositions of declarants. The
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`panel noted that in inter partes review proceedings, the rules require designation of
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`lead counsel and at least one back-up counsel, who may be contacted for such
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`scheduling matters. The panel observed that in each of the five noted proceedings
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`here, a dedicated lead counsel and at least one back-up counsel have been so
`
`designated, and are thus available for consultation with respect to the noted
`
`matters. The panel indicated that the parties should work together to schedule
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`
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`5
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`
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`Case IPR2014-00281
`Patent 6,324,463
`
`appropriate matters, such as depositions, and only contact the Board if no
`
`resolution can be reached.
`
`
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`Counsel of Patent Owner also sought to discuss hypothetical scenarios
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`concerning various potential outcomes concerning any final written decisions in
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`each of the five cases. The panel declined to provide any advisory opinion as to
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`hypothetical outcomes. The panel did query counsel of Petitioner in connection
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`with the -00281 proceeding, as well as counsel for the Petitioner in each of the
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`other four noted proceedings, as to whether they understood that any final written
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`decisions issued on the same day would be regarded as having been issued
`
`simultaneously. Counsel for the Petitioner in each proceeding represented that
`
`they had such understanding.
`
`9. Settlement
`
`The Board inquired as to the status of any ongoing settlement discussions
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`that might affect the conduct of this proceeding. The parties did not indicate that
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`any such discussions were occurring.
`
`6
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`
`Case IPR2014-00281
`Patent 6,324,463
`
`FOR PETITIONER:
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`
`
`Robert Steinberg
`LATHAM & WATKINS LLP
`bob.steinberg@lw.com
`
`
`Matthew D. Satchwell
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`
`John M. Caracappa
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`
`William H. Mandir
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`
`FOR PATENT OWNER:
`
`John R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`
`Kelly L. Kasha
`KASHA LAW LLC
`kelly.kasha@kashalaw.com
`
`7
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