Trials@uspto.gov
`571.272.7822
`
` IPR2014-00648; Paper 19,
` IPR2014-00649; Paper 16,
` IPR2014-00650; Paper 19,
`
` Entered: November 21, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WEBASTO ROOF SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`
`_______________
`
`Case IPR2014-00648 (Patent 8,217,612 B2)
`Case IPR2014-00649 (Patent 7,548,037 B2)
`Case IPR2014-00650 (Patent 7,579,802 B2)1
`_______________
`
`
`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 This order addresses issues that are identical in the three cases. The parties
`are not authorized to use this heading style in their papers.
`
`
`571.272.7822
`
` IPR2014-00648; Paper 19,
` IPR2014-00649; Paper 16,
` IPR2014-00650; Paper 19,
`
` Entered: November 21, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WEBASTO ROOF SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UUSI, LLC,
`Patent Owner.
`
`_______________
`
`Case IPR2014-00648 (Patent 8,217,612 B2)
`Case IPR2014-00649 (Patent 7,548,037 B2)
`Case IPR2014-00650 (Patent 7,579,802 B2)1
`_______________
`
`
`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 This order addresses issues that are identical in the three cases. The parties
`are not authorized to use this heading style in their papers.
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00649 (Patent 7,548,037 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`
`
`
`A combined initial conference call was held on November 20, 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.
`
`Scheduling Order
`
`Petitioner and Patent Owner indicated they are generally comfortable
`
`with the dates set forth in the Scheduling Orders3 (identical for the three
`
`captioned proceedings). We are advised that one of Petitioner’s expert
`
`declarants sustained an injury and may require a hospitalization that might
`
`necessitate a schedule change. Patent Owner is concerned that a schedule
`
`slip in one case may provide an opportunity for Petitioner’s expert to see a
`
`Patent Owner response in another of the proceedings prior to cross-
`
`examination of the expert by Patent Owner. This could be prejudicial to
`
`Patent Owner.
`
`We plan to keep these three proceedings synchronized. Thus, if any
`
`of the three proceedings causes a change to the schedule, the change will be
`
`effective as to all three.
`
`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. The parties were urged to work out an accommodating
`
`
`2 IPR2014-00648 Paper 17; IPR2014-00649 Paper 15; and IPR2014-00650
`Paper 17.
`3 IPR2014-00648 Paper 15; IPR2014-00649 Paper 14; and IPR2014-00650
`Paper 15.
`
`
`
`
`2
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00649 (Patent 7,548,037 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`schedule. Counsel should request a conference with the Board if they are
`
`ever unable to reach an agreement.
`
`Protective Order (Rule 42.54)
`
`Neither party has indicated a 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.
`
`Copending Litigation
`
`The parties confirmed that the copending litigation between the
`
`parties, UUSI, LLC v. Webasto Roof Systems, Inc., Civil Action No. 2:13-cv-
`
`11704 (E.D. Mich.), has been stayed pending our decision in these inter
`
`partes reviews.
`
`Motion to Exclude
`
`Petitioner indicates that it may wish to file one or more motions to
`
`exclude evidence. The parties were advised as to the process described by
`
`37 C.F.R. § 42.64 including the serving of an objection to evidence and
`
`supplemental evidence and the subsequent filing of a motion to exclude
`
`should the objection not be cured.
`
`
`
`
`3
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00649 (Patent 7,548,037 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`
`Motion for Observations
`
`Petitioner also indicates that it may wish to file a motion for
`
`observations. In the event that cross-examination occurs after a party has
`
`filed its last substantive paper on an issue, such cross-examination may
`
`result in testimony that should be called to the Board’s attention, but the
`
`party does not believe a motion to exclude the testimony is warranted. The
`
`Board may authorize the filing of observations to identify such testimony
`
`and responses to observations. Please refer to the guidance set forth in the
`
`Patent Trial Practice Guide. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,755, 48,768 (Aug. 14, 2012). Observations on cross-examination
`
`provide a mechanism to draw the Board’s attention to relevant cross-
`
`examination testimony of a witness. Each observation must be a concise
`
`statement of the relevance of precisely identified testimony to a precisely
`
`identified argument or portion of an exhibit. An observation, however, is
`
`not an opportunity to raise new issues, to re-argue issues, or to pursue
`
`objections.
`
`The parties indicate nothing further to report regarding settlement.
`
`Settlement
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2014-00648 (Patent 8,217,612 B2)
`IPR2014-00649 (Patent 7,548,037 B2)
`IPR2014-00650 (Patent 7,579,802 B2)
`
`
`
`
`ORDER
`
`Accordingly, it is hereby
`
`ORDERED that the trial schedule remains as set in the Scheduling
`
`Orders.
`
`
`For PETITIONER:
`
`Charles Sanders
`GOODWIN PROCTER LLP
`csanders@goodwinprocter.com
`
`Timothy Rousseau
`GOODWIN PROCTER LLP
`trousseau@goodwinprocter.com
`
`Phong Dinh
`GOODWIN PROCTER LLP
`pdinh@goodwinprocter.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
`
`Hemant M. Keskar
`HARNESS, DICKEY & PIERCE, P.L.C.
`hkeskar@hdp.com
`
`
`
`
`
`
`5
`
`
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