Trials@uspto.gov Paper No. 10 Paper 16
`
`571-272-7822
`Date Entered: September 16, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00416
`Patent 8,217,612
`
`Case IPR2014-004171
`Patent 7,579,802
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`1 Even though this ORDER pertains to two cases, the parties may not use a
`combined caption and must file documents separately in each case until such
`time as cases may become consolidated and such authorization is granted.
`
`
`
`571-272-7822
`Date Entered: September 16, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROSE NORTH AMERICA, INC.
`and
`BROSE FAHRZEUGTEILE GMBH & CO. KG, HALLSTADT,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00416
`Patent 8,217,612
`
`Case IPR2014-004171
`Patent 7,579,802
`____________
`
`
`
`
`Before GLENN J. PERRY, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`
`PERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`1 Even though this ORDER pertains to two cases, the parties may not use a
`combined caption and must file documents separately in each case until such
`time as cases may become consolidated and such authorization is granted.
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`
`
`
`
`
`A combined initial conference call was held on September 4, 2014
`
`and attended by the above-identified panel members and respective counsel
`
`for the parties. We received from Petitioner a list of proposed motions2 in
`
`each of the cases. The following matters were discussed.
`
`Court Reporter
`
`Petitioner indicated that it had arranged for a court reporter to be
`
`present on the call. A court reporter is not necessary for the initial
`
`conference call. Nevertheless, given that a transcript is being made we ask
`
`that it be filed by Petitioner as an exhibit in both cases.
`
`Scheduling Order
`
`Petitioner and Patent Owner indicated they are generally comfortable
`
`with the dates set forth in the Scheduling Order.3 Patent Owner indicated
`
`that there does not appear to be a scheduling order of record in the ’417 case.
`
`The Board appreciates Patent Owner calling this to our attention, will check
`
`the PRPS system, and make a correction if appropriate.
`
`Counsel may agree, without consulting the Board, to alter any of Due
`
`Dates 1-5 of the Scheduling Order so long as they do not intrude on Due
`
`Dates 6 and 7. Counsel should request a conference with the Board if they
`
`are ever unable to reach an agreement as to the schedule.
`
`
`2 IPR2014-00416 Paper 13; IPR2014-00417 Paper 13.
`3 IPR2014-00416 Paper 14; IPR2014-00417 Paper 15.
`
`
`
`2
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`
`Protective Order (Rule 42.54)
`
`The parties have indicated that there is no present need for a
`
`protective order. If one is needed as these cases proceed, an appropriate
`
`motion can be filed. A protective order is not automatically in place in AIA
`
`proceedings. The parties are advised that in the event a protective order is
`
`needed, they should first attempt to agree on the language of a protective
`
`order. There is a default protective order set forth in an appendix to our
`
`Trial Practice Guide. It is intended as a model which can be adopted as is,
`
`or altered as appropriate to the circumstances. After working out language
`
`for the protective order, counsel should initiate a conference call with the
`
`panel in order to obtain authorization for filing a motion to have the agreed-
`
`upon protective order made effective.
`
`Supplemental Information
`
`Petitioner seeks authorization to file a motion in the ’417 case under
`
`37 C.F.R. § 42.123(a) to submit supplemental information, viz.: (1) U.S.
`
`Patent No. 6,404,158; (2) U.S. Patent Pub. No. 2002/0121872; and (3) U.S.
`
`Patent Pub. No. 2002/0101210. Petitioner indicated during the conference
`
`call that the proposed supplemental information is not needed in the ’416
`
`case. We waived4 the thirty day requirement set forth in 37 C.F.R. §
`
`42.123(a), (b) in order to more efficiently deal with this issue in this initial
`
`conference call, previously scheduled to take place beyond the thirty day
`
`period. Petitioner represents that the documents to be submitted are patent
`
`documents related to the ’802 patent and that they will help the Board with
`
`the claim construction of the ’802 patent. Patent owner does not oppose
`
`
`4 IPR2014-00417 Paper 14.
`
`
`
`3
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`authorization. Authorization to file the motion in the ’417 case is granted.
`
`Motion for Appearance Pro Hac Vice
`
`Petitioner seeks authorization for a motion under 37 C.F.R. § 42.10(c)
`
`to permit the pro hac vice appearance of Luke Dauchot, P.C. of Kirkland &
`
`Ellis LLP in these IPR proceedings. Such pro hac vice motions were
`
`authorized in the Notices of Filing Date Accorded.5 No further authorization
`
`is needed.
`
`Potential Joinder
`
`The patents at issue in these cases are also involved in additional IPR
`
`cases brought by Petitioner Webasto Roof Systems.6 Petitioner Webasto
`
`Roof Systems was not invited to participate in this initial conference call.
`
`Petitioner notes that Webasto Roof Systems filed a motion in Case IPR2014-
`
`00648 to “partially join” IPR2014-00416 because of the overlap (but not
`
`identity) of issues, and similarly in IPR2014-00650 and IPR2014-00417.
`
`Although we plan to separately deal with the joinder issues in this family of
`
`cases, we invited comment from the parties concerning such potential
`
`combination.
`
`Both Petitioner and Patent Owner note that although there may be
`
`efficiencies to be gained by joining cases, there are legal issues that will be
`
`raised by joinder, e.g. estoppels forced on Petitioner with regard to claims
`
`11, 15 and 16 of the ’802 patent, that are not present in these cases as they
`
`now stand. Patent Owner opposes joinder and suggests the possibility of
`
`combined hearing dates.
`
`We note that one consequence of joinder is that multiple parties
`
`
`5 IPR2014-00416 Paper 4; IPR2014-00417 Paper 5.
`6 IPR2014-00648 and IPR2014-00650.
`
`
`
`4
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`constitute a single “Petitioner” that must speak with one voice through the
`
`same Counsel. Such is not the case for separately tried cases. The Board
`
`will take up the question of joinder with respect to cases IPR2014-00648 and
`
`IPR2014-00650.
`
`Copending Litigation
`
`The parties confirmed that the copending litigation between the
`
`parties, UUSI, LLC v. Robert Bosch LLC and Brose North America, Inc.,
`
`Civil Action No. 2:13-cv-10444 (E.D. Mich.), has been stayed pending our
`
`decision in these inter partes reviews.
`
`Settlement
`
`The parties indicated that settlement has not been discussed.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2014-00416 and IPR2014-00417
`Patent 8,217,612 and Patent 7,579,802
`
`
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that Petitioner is authorized to file a motion to submit
`
`supplemental information as set forth above; and
`
`FURTHER ORDERED that the trial schedule remains as set in the
`
`
`
`Scheduling Orders.
`
`
`
`
`
`FOR PETITIONER:
`
`Craig D. Leavell
`KIRKLAND & ELLIS LLP
`craig.leavell@kirkland.com
`
`Alyse Wu
`KIRKLAND & ELLIS LLP
`alyse.wu@kirkland.com
`
`
`
`FOR PATENT OWNER:
`
`
`
`Monte L. Falcoff
`HARNESS, DICKEY & PIERCE, P.L.C.
`mlfalcoff@hdp.com
`
`Michael R. Nye
`HARNESS, DICKEY & PIERCE, P.L.C.
`mnye@hdp.com
`
`
`
`6
`
`
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