`Tel: 571-272-7822
`
`Paper 24
`Entered: September 26, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICRO MOTION, INC.,
`Petitioner,
`
`v.
`
`
`
`INVENSYS SYSTEMS, INC.,
`Patent Owner.
`____________
`
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
` IPR2014-01409 (Patent 7,571,062 B2)1
`____________
`
`
`Before WILLIAM V. SAINDON, MICHAEL R. ZECHER,
`and JENNIFER M. MEYER, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that affect each of these cases.
`
`
`
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`IPR2014-01409 (Patent 7,571,062 B2)
`A conference call for the above-identified proceedings was held on
`September 26, 2014, between respective counsel for Petitioner and Patent
`Owner, and Judges Saindon, Zecher, and Meyer. Petitioner requested the
`call to address issues regarding the outstanding Motion for Joinder in
`IPR2014-01409 and the upcoming deposition of Petitioner’s expert in
`IPR2013-00390, IPR2014-00392, and IPR2013-00393.
`We instituted inter partes review in IPR2014-00393 on August 4,
`2014. One month later, Petitioner filed a Petition in IPR2014-01409 with a
`Motion for Joinder, to join it to IPR2014-00393. Both of these proceedings
`involve the same patent. We have not ruled yet on that Motion.
`The following issues were discussed.
`Petitioner first requested to file a joint proposed schedule should the
`two proceedings be joined, citing to the procedure followed in Ariosa v. Isis,
`Case IPR2012-00022 (PTAB May 1, 2013) (Paper 35). Effectively,
`Petitioner requests that the existing schedule in IPR2014-00393 be pushed
`back to accommodate IPR2014-01409. Petitioner also requested, to
`accommodate that schedule, that Patent Owner’s Opposition to Petitioner’s
`Motion for Joinder, if any, be made in Patent Owner’s Preliminary
`Response.
`The panel heard from both sides. We authorized Patent Owner’s
`request to file an Opposition to the Motion for Joinder and we set a due date
`of October 6, 2014. After Patent Owner files its Opposition, Petitioner may
`request authorization to file a Reply by contacting the Board. Upon receipt
`of the Opposition and the Reply, if any, we will rule on the Motion for
`Joinder, in due course.
`
`2
`
`
`
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`IPR2014-01409 (Patent 7,571,062 B2)
`Petitioner lastly notified the panel that the parties had not yet reached
`agreement regarding the length of the deposition of Petitioner’s expert, Dr.
`Sidman, which is set to begin next week on Tuesday, September 30, 2014.
`In addition to IPR2014-00393, the deposition will involve IPR2014-00390
`and IPR2014-00392, which were instituted on the same day as the ’393 IPR
`and include overlapping issues. We encouraged the parties to come to
`agreement regarding the length of depositions and reminded the parties of
`the default times, in the absence of agreement, set forth in 37 C.F.R. § 42.53.
`In addition, last month Patent Owner deposed Dr. Sidman in
`IPR2014-00167, IPR2014-00170, IPR2014-00178, and IPR2014-00179,
`which have overlapping issues with IPR2014-00390, IPR2014-00392, and
`IPR2014-00393. To help potentially mitigate the deposition length dispute,
`the parties indicated, during the call, their agreement to allow Dr. Sidman’s
`prior testimony in the related cases to be relied upon in IPR2014-00390,
`IPR2014-00392, and IPR2014-00393, subject to our approval. We approved
`this agreement because it promotes the speedy and inexpensive resolution of
`these proceedings. See 37 C.F.R. § 42.1(b).
`ORDER
`
`
`
`It is hereby:
`ORDERED that Patent Owner may file an Opposition to Petitioner’s
`Motion for Joinder in IPR2014-01409, and that Opposition is to be no more
`than 15 pages and is due October 6, 2014;
`FURTHER ORDERED the parties are permitted to file one or more of
`Exhibit 2025 from IPR2014-00167, Exhibits 2014 and 2015 from IPR2014-
`00170, Exhibit 2026 from IPR2014-00178, and Exhibit 2015 from IPR2014-
`
`3
`
`
`
`IPR2014-00390 (Patent 6,754,594 B2)
`IPR2014-00392 (Patent 8,000,906 B2)
`IPR2014-00393 (Patent 7,571,062 B2)
`IPR2014-01409 (Patent 7,571,062 B2)
`00179, as an exhibit in IPR2014-00390, IPR2014-00392, and/or IPR2014-
`00393, and may rely upon the testimony in those exhibits as if it had been
`taken previously in IPR2014-00390, IPR2014-00392, and/or IPR2014-
`00393.
`
`PETITIONER:
`Andrew S. Baluch
`Jeffrey N. Costakos
`Angela D. Murch
`Michelle Moran
`Linda E.B. Hansen
`FOLEY & LARDNER LLP
`WASH-Abaluch-PTAB@foley.com
`abaluch@foley.com
`jcostakos@foley.com
`amurch@foley.com
`mmoran@foley.com
`LHansen@foley.com
`
`PATENT OWNER:
`Jeffrey L. Johnson
`James M. Heintz
`DLA PIPER LLP (US)
`jeffrey.johnson@dlapiper.com
`Invensys_Micro_IPR@dlapiper.com
`
`4
`
`
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