Trials@uspto.gov
`571-272-7822
`
`
`Paper 11
`Date Entered: December 18, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-00709
`Patent 8,028,323 B2
`____________
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE and
`FRANCES L. IPPOLITO, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`571-272-7822
`
`
`Paper 11
`Date Entered: December 18, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`
`
`Case IPR2014-00709
`Patent 8,028,323 B2
`____________
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE and
`FRANCES L. IPPOLITO, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`Case IPR2014-00709
`Patent 8,028,323 B2
`
`
`A consolidated initial conference in the following nine related proceedings
`(the “Related Proceedings”) was conducted on November 20, 2014: IPR2014-
`00709, IPR2014-00711, IPR2014-00717, IPR2014-00718, IPR2014-00721,
`IPR2014-00723, IPR2014-00735, IPR2014-00737, IPR2014-00740. Samsung
`Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
`Telecommunications America, LLC (collectively, “Petitioner”) was represented by
`lead counsel, Andrea Reister, and back-up counsel, Gregory Discher. In IPR2014-
`00709 (the “Subject Proceeding”), Black Hills Media, LLC (“Patent Owner”) was
`represented by lead counsel, Lana Gladstein, and back-up counsel, Thomas
`Engellenner. The following subjects were discussed during the conference:
`Related Matters
`Patent Owner advised that none of the patents that are the subject of the
`Related Proceedings is involved in a reexamination proceeding. The parties
`reported that all related litigation has been stayed.
`Scheduling Order
`We deferred issuing a Scheduling Order with the Decision to Institute in
`each of the Related Proceedings in order to provide the parties an opportunity to
`discuss with the Board how to coordinate oral hearings. Due to the extensive
`overlap of issues in the proceedings, the oral hearings in the Related Proceedings
`will be consolidated in the following manner: IPR2014-00709, -00711 and -00723
`will be heard together; IPR2014-00737 and -00740 will be heard together;
`IPR2014-00718 and -00721 will be heard together; IPR2014-00717 and IPR-00735
`will be heard separately. The above consolidation is subject to change as issues
`develop and the Board deems appropriate. During the conference call, the parties
`agreed that the oral hearings in these proceedings will be scheduled to take place
`
`
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`2
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`Case IPR2014-00709
`Patent 8,028,323 B2
`
`on July 27 and July 28, 2015. We will enter an appropriate Scheduling Order in
`each proceeding.
` 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, 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, Office Trial Practice Guide, 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.
`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. at 48761. 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.
`
`
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`Case IPR2014-00709
`Patent 8,028,323 B2
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`
`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. §§ 42.51-52 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
`There are currently no motions to be addressed in this proceeding.
`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
`party seeking to file a motion 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 a 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
`
`
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`4
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`
`
`Case IPR2014-00709
`Patent 8,028,323 B2
`
`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); and Invensense, Inc. v.
`STMicroelectronics, Inc., IPR2013-00241, Paper No. 21 (January 9, 2014); Toyota
`Motor Corp. v. American Vehicular Sciences LLC, IPR2013-00423, Paper No. 27
`(March 7, 2014); Corning Optical Communications RF, LLC v. PPC Broadband,
`Inc., IPR2014-00441, Paper 19 (Oct. 30, 2014).
`Settlement
`Counsel stated that, at this time, they are not aware of any settlement
`discussions that could impact these proceedings.
`Other
`A court reporter was present and the parties agreed to file a transcript of the
`
`proceedings.
`
`
`
`
`
`
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`
`
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`
`
`
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`5
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`
`
`Case IPR2014-00709
`Patent 8,028,323 B2
`
`PETITIONER:
`
`Andrea Reister
`Gregory Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`
`PATENT OWNER:
`
`Lana Gladstein
`Thomas Engellenner
`PEPPER HAMILTON LLP
`gladsteinl@pepperlaw.com
`engellennert@pepperlaw.com
`
`Christopher Horgan
`CONCERT TECHNOLOGY
`chris.horgan@concerttechnology.com
`
`
`
`
`
`
`
`6
`
`
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