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