Trials@uspto.gov
`571-272-7822
`
`
`
`IPR2014-00413 Paper 17
`IPR2013-00414 Paper 16
`Date Entered: September 17, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case IPR2014-00413
`Case IPR2014-00414
`Patent 8,346,894 B21
`____________
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY AND ORDER TO FILE TRANSCRIPT
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`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.
`
`
`571-272-7822
`
`
`
`IPR2014-00413 Paper 17
`IPR2013-00414 Paper 16
`Date Entered: September 17, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAP AMERICA, INC.,
`Petitioner,
`
`v.
`
`LAKSHMI ARUNACHALAM,
`Patent Owner.
`____________
`
`Case IPR2014-00413
`Case IPR2014-00414
`Patent 8,346,894 B21
`____________
`
`Before KARL D. EASTHOM, WILLIAM V. SAINDON and
`BRIAN J. McNAMARA, Administrative Patent Judges
`
`
`McNAMARA, Administrative Patent Judge.
`
`
`INITIAL CONFERENCE SUMMARY AND ORDER TO FILE TRANSCRIPT
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`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.
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`
`An initial conference in these proceedings, which are designated IPR2014–
`00413 and IPR2014–00414, both of which concern U.S. Patent 8,346,894 B2 (the
`’894 Patent), was conducted on September 16, 2014. SAP America, Inc.
`(“Petitioner”) was represented by lead counsel, Lori Gordon, and back-up counsel,
`Michael Lee and Joseph Beauchamp. Lakshmi Arunachalam (“Patent Owner”)
`appeared pro se. Judges McNamara, Saindon, and Easthom participated in the
`conference. A court reporter was also present.
`Background
`At the time this proceeding was filed, the ’894 Patent was owned by Pi-Net
`International, Inc. Counsel for Pi-Net International, Inc. filed a Power of Attorney
`signed by Lakshmi Arunachalam, on behalf of Pi-Net International, Inc. and
`Mandatory Notices entering their appearances. IPR2013-00413, Papers 6 and 7;
`IPR 2014-00414, Papers 5 and 6. On September 10, 2014, an assignment from Pi-
`Net International, Inc. to the inventor, Dr. Lakshmi Arunachalam, was recorded in
`the United States Patent and Trademark Office at Reel 033715, Frame 0569. On
`September 12, 2014, Dr. Arunachalam filed a Mandatory Notice appearing pro se.
`(IPR2014-00413, Paper 14; IPR2014-00414, Paper 13). As Pi-Net International,
`Inc. no longer is the owner of the ’894 Patent, previous counsel of record, who do
`not have a Power of Attorney from the current patent owner, Dr. Arunachalam, are
`no longer authorized to act on behalf of the Patent Owner.
`The following subjects were discussed during the initial conference:
`Patent Owner’s Representation
`During the conference, we questioned Dr. Arunachalam, who stated that she
`is not a registered patent agent or an attorney. Given the complexity of these
`proceedings, we urged Dr. Arunachalam to seek counsel. Dr. Arunachalam
`indicated that she was aware of the circumstances. We again remind Dr.
`
`
`
`2
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`Arunachalam that these are complex proceedings and that by proceeding without
`the assistance of counsel she is assuming a significant risk.
`Related Matters
`Patent Owner indicated that the ’894 Patent is not the subject of any
`reexamination proceedings. The ’894 Patent is also the subject of CBM2014-
`00101, which is currently pending. The ’894 Patent was also the subject of
`CBM2014-00089 and CBM2014-00097, which were recently terminated.
`Scheduling Order
`Both parties confirmed that they seek no changes to the current Scheduling
`Order. The parties are reminded that, without obtaining prior authorization from
`the Board, they may stipulate to different dates for DATES 1-5, as provided in the
`Scheduling Order, by filing an appropriate notice with the Board. The parties may
`not stipulate to any other changes to the Scheduling Order.
`Protective Order
`The parties have not discussed a protective order at this time. No protective
`order has been entered in this proceeding. The parties are 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, Office Patent Trial Practice Guide, 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 propose a protective order other than or
`departing from the default Standing Protective Order, id., they must submit a joint,
`proposed protective order, accompanied by a red-lined version based on the default
`Standing Protective Order in Appendix B to the Board’s Office Patent Trial
`Practice Guide. See id. at 48769.
`
`
`
`3
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`
`We also remind the parties of the expectation that confidential information
`relied upon or identified in a final written decision will be made public. Id. at
`48760. Confidential information that is subject to a protective order ordinarily
`becomes public 45 days after denial of a petition to institute or 45 after final
`judgment in a trial. Id. A party seeking to maintain the confidentiality of the
`information may file a motion to expunge the information from the record prior to
`the information becoming public. 37 C.F.R. § 42.56.
`Initial Disclosures and Discovery
`The parties have not stipulated to any initial disclosures at this time. The
`parties are reminded of the discovery provisions of 37 C.F.R. §§ 42.51-42.52 and
`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. If the
`parties are unable to resolve discovery issues between them, the parties may
`request a conference with the Board. 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.
`The parties are reminded of the provisions for taking testimony found at
`37 C.F.R. § 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48772,
`App. D.
`Motions
`Prior to the initial conference, Patent Owner filed a list of anticipated
`motions. There are currently no motions to be addressed.2
`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
`
`2 See “Other Matters” below.
`
`
`
`4
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`party seeking to file a motion, or seeking other relief, should request a conference
`to obtain authorization to file the motion. No motions are authorized in this
`proceeding at this time.
`Although Board authorization is not required for the Patent Owner to file
`one motion to amend the patent by cancelling or substituting claims, we remind
`Patent Owner of the requirement to request a conference with the Board before
`filing a motion to amend. 37 C.F.R. § 42.121(a). The conference should take
`place at least two weeks before filing the motion to amend. The Board takes this
`opportunity to remind the Patent Owner that a motion to amend must explain in
`detail how any proposed substitute claim obviates the grounds of unpatentability
`authorized in this proceeding, and clearly identify where the corresponding written
`description support in the original disclosure can be found for each claim added. If
`the motion to amend includes a proposed substitution of claims beyond a one-for-
`one substitution, the motion must explain why more than a one-for-one substitution
`of claims is necessary. For further guidance regarding these requirements, Patent
`Owner is directed to several decisions concerning motions to amend, including
`Nichia Corporation v. Emcore Corporation, IPR2012–00005, Paper No. 27 (June
`3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012–00027, Paper No. 26
`(June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v. ContentGuard
`Holdings, IPR2013-00136, Paper 33 (November 7, 2013); Invensense, Inc. v.
`STMicroelectronics, Inc., IPR2013-00241, Paper No. 21, (January 9, 2014); and
`Toyota Motor Corp. v. American Vehicular Sciences LLC, IPR2013–00423, Paper
`No. 27 (March 7, 2014).
`Other Matters
`On September 15, 2014, Patent Owner filed a paper titled “Patent Owner
`Challenging Validity and Impartiality of Proceedings Due To Fraud Upon The
`
`
`
`5
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`Office and Request For Fraud Investigation By The Inspector General.” IPR2014–
`00413, Paper 15; IPR2014–00414, Paper 14.3 Patent Owner did not seek
`authorization to file such a paper. Patent Owner is reminded that papers filed
`without obtaining prior Board authorization will not be considered. However,
`given Patent Owner’s pro se status, we will not expunge the filings at this time.
`Noting that Patent Owner’s filings request a stay of proceedings based on
`allegations of misconduct in the district court, Petitioner sought authorization to
`file a responsive paper. We noted that Patent Owner does not allege any
`misconduct at this Board and that Patent Owner filed a similar paper in related
`cases IPR2013–00194, IPR2013–00195, and CBM2013–00013, all of which are
`nearing conclusion. Petitioner is a party in all of those cases. Therefore, we
`authorized Petitioner to file a two page response in IPR2013–00194, IPR2013–
`00195, and CBM2013–00013 by September 17, 2014. We did not authorize
`Petitioner to file a responsive paper in this proceeding. We will take up the matter
`in due course and request a responsive paper if one is necessary.
`Settlement
`Patent Owner suggested direct discussions between the parties. However,
`there is no indication of a settlement that would have immediate impact on these
`proceedings.
`Transcript
`As noted above, a court reporter transcribed this conference. We determine
`that it would be appropriate for the parties to file a copy of the transcript with the
`Board as an exhibit.
`In consideration of the above, it is
`
`
`3 Patent Owner filed a similar paper in several related proceedings concerning the
`’894 Patent and other patents.
`
`
`
`6
`
`
`
`Case IPR2014-00413; IPR2014-00414
`Patent 8,346,894 B2
`
`
`ORDERED that the parties file a transcript of the initial conference.
`
`
`
`
`PETITIONER:
`
`Lori A. Gordon
`Michael Q. Lee
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`Lgordon-PTAB@skgf.com
`Mlee-PTAB@skgf.com
`
`PATENT OWNER:
`
`Tam Thanh Pham
`Lauren May Eaton
`LEWIS ROCA ROTHGERBER LLP
`tpham@lrrlaw.com
`Pi-Net_PTAB@lrrlaw.com
`
`
`
`
`
`
`
`7
`
`
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