`
`
` Entered: September 17, 2014
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MASTERCARD INTERNATIONAL INCORPORATED,
`Petitioner,
`
`v.
`
`JOHN D’AGOSTINO,
`Patent Owner.
`
`
`
`Case IPR2014-00543 (Patent 8,036,988)
`Case IPR2014-00544 (Patent 7,840,486)
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`KALYAN K. DESHPANDE, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00543 (U.S. Patent No. 8,036,988)
`Case IPR2014-00544 (U.S. Patent No. 7,840,486)
`
`
`On September 17, 2014, the initial conference call was held between counsel
`
`for the respective parties and Judges Medley, Easthom, and Deshpande.
`
`Motions
`
`Petitioner requests authorization to file a motion to stay Ex Parte
`
`Reexamination proceeding 90/012517. Petitioner specifically requests
`
`authorization to file this motion because a Notice of Intent to Issue a Reexam
`
`Certificate was mailed on September 12, 2014 and the position of Notice of Intent
`
`to Issue a Reexam Certificate and our position in our Decision to Institute are
`
`inconsistent. Patent Owner indicated that they will oppose Petitioner’s motion to
`
`stay the Ex Parte Reexamination proceeding. We grant Petitioner’s request for
`
`authorization to file a motion to stay the Ex Parte Reexamination proceeding for the
`
`reasons identified by the Petitioner. The motion is limited to five pages in length
`
`and must be submitted no later than September 22, 2014. Patent Owner is
`
`authorized to oppose Petitioner’s motion, where the opposition is limited to five
`
`pages in length and must be submitted no later than September 27, 2014.
`
`Neither party seeks authorization to file any additional motions at this time.
`
`As explained, if Patent Owner determines that it will file a motion to amend, Patent
`
`Owner must arrange a conference call with the Board and opposing counsel to
`
`discuss the proposed motion to amend. See 37 C.F.R. § 42.121(a).
`
`The parties were reminded that if they seek authorization to file a motion not
`
`contemplated per the Scheduling Order, the party requesting such authorization
`
`must arrange a conference call with opposing counsel and the Board.
`
`
`
`Schedule
`
`2
`
`
`
`Case IPR2014-00543 (U.S. Patent No. 8,036,988)
`Case IPR2014-00544 (U.S. Patent No. 7,840,486)
`
`
`Counsel for the respective parties indicated that they have no conflicts with
`
`the Scheduling Order entered September 4, 2014. Paper 9.
`
`To the extent issues arise with DUE DATES 1-5 identified in the Scheduling
`
`Order, the parties are reminded that, without obtaining prior authorization from the
`
`Board, they may stipulate to different dates for DUE DATES 1-5, but no later than
`
`DUE DATE 6, 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.
`
`It is
`
`Order
`
`ORDERED that Petitioner is authorized to file a motion to stay Ex Parte
`
`Reexamination Proceeding 90/012517 and Patent Owner is authorized to file an
`
`opposition to this motion.
`
`FURTHER ORDERED Petitioner’s motion to stay is limited to five pages in
`
`length and must be filed no later than September 22, 2014.
`
`FURTHER ORDERED Patent Owner’s opposition is limited to five pages in
`
`length and must be filed no later than September 27, 2014.
`
`
`
`3
`
`
`
`Case IPR2014-00543 (U.S. Patent No. 8,036,988)
`Case IPR2014-00544 (U.S. Patent No. 7,840,486)
`
`
`
`
`For PETITIONER:
`
`Robert Scheinfeld
`Eliot Williams
`BAKER BOTTS LLP
`robert.scheinfeld@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`For PATENT OWNER:
`Stephen J. Lewellyn
`Brittany J. Maxey
`MAXEY LAW OFFICES, PLLC
`s.lewellyn@maxeyiplaw.com
`b.maxey@maxeyiplaw.com
`
`
`
`4
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