Trials@uspto.gov Paper No. 10 IPR2014-00733 Paper 14
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`571-272-7822
`IPR2014-00766 Paper 14
`Date Entered: December 29, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
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`v.
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`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
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`Case IPR2014-00733
`Patent 8,458,356
`Case IPR2014-00766
`Patent 8,214,8731
`____________
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`Before BRIAN J. McNAMARA, DAVID C. McKONE, PETER P. CHEN and
`FRANCES L. IPPOLITO, Administrative Patent Judges
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`McNAMARA, Administrative Patent Judge.
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`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
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`
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`1This paper addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one paper to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
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`

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`IPR2014-00733; IPR2014-00766
`Patent 8,458,356 B2; 8,214,873
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`An initial conference in IPR2014-00733, which concerns U.S. Patent No.
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`8,458,356 B2 (the ’356 Patent) and IPR 2014-00766, which concerns U.S. Patent
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`No. 8,214,873 B2 (the ’873 Patent), was conducted on December 17, 2014. In
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`both proceedings, Yamaha Corporation of America (“Petitioner”) was represented
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`by lead counsel, David L. Fehrman. In IPR2013-00733 Black Hills Media, LLC
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`(“Patent Owner”) was represented by lead counsel, Reza Mollaaghababa and back-
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`up counsel, Thomas Engellenner. In IPR2014-00766, Patent Owner was
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`represented by lead counsel Lana Gladstein and back-up counsel Thomas
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`Engellenner. The following subjects were discussed during the conference:
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`Related Matters
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`The parties reported that neither the ’356 nor the ’873 Patent is the subject of
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`a reexamination proceeding.
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`Scheduling Order
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`To accommodate a schedule conflict, counsel for one of the parties
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`requested that the hearing date be moved from June 18, 2015 to June 11, 2015, or
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`another day during that week. There was no objection to the request. Due to the
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`availability of hearing rooms, the hearing will be rescheduled to June 10, 2015 at
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`1:00 PM Eastern time.
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`The parties are reminded that, without obtaining prior authorization from the
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`Board, they may stipulate to different dates for DATES 1–5, as provided in the
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`Scheduling Order, by filing an appropriate notice with the Board. The parties may
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`not stipulate to any other changes to the Scheduling Order. The parties indicated
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`that they have agreed to adjust Dates 1 and 2 and will file a stipulation shortly.
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`Protective Order
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`The parties have not discussed a protective order at this time. No protective
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`order has been entered in this proceeding. The parties are reminded of the
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`requirement for a protective order when filing a motion to seal. See, 37 C.F.R. §
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`2
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`

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`IPR2014-00733; IPR2014-00766
`Patent 8,458,356 B2; 8,214,873
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`42.54. If the parties have agreed to a proposed protective order, including the
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`Standing Default Protective Order, Office Trial Practice Guide, 77 Fed. Reg.
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`48756, App. B (Aug 14, 2012), they should file a signed copy of the proposed
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`protective order with the motion to seal. If the parties propose a protective order
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`other than or departing from the default Standing Protective Order, id., they must
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`submit a joint, proposed protective order, accompanied by a red-lined version
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`based on the default Standing Protective Order. See, id. at 48769.
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`We also remind the parties of the expectation that confidential information
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`relied upon or identified in a final written decision will be made public. Id. at
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`48760. Confidential information that is subject to a protective order ordinarily
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`becomes public 45 days after denial of a petition to institute or 45 after final
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`judgment in a trial. Id. A party seeking to maintain the confidentiality of the
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`information may file a motion to expunge the information from the record prior to
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`the information becoming public. See 37 C.F.R. § 42.56.
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`Initial Disclosures and Discovery
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`The parties have not stipulated to any initial disclosures at this time. The
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`parties are reminded of the discovery provisions of 37 C.F.R. § 42.51–52 and the
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`Office Trial Practice Guide. See, 77 Fed. Reg. at 48761–2. Discovery requests
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`and objections are not to be filed with the Board without prior authorization. If the
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`parties are unable to resolve discovery issues between them, the parties may
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`request a conference with the Board. A motion to exclude, which does not require
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`Board authorization, must be filed to preserve any objection. See 37 C.F.R.
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`§ 37.64, Office Trial Practice Guide, 77 Fed. Reg. at 48767. There are no
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`discovery issues pending at this time.
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`The parties are reminded of the provisions for taking testimony found at 37
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`C.F.R. § 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48,772,
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`App. D.
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`3
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`

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`IPR2014-00733; IPR2014-00766
`Patent 8,458,356 B2; 8,214,873
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`Motions
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`The parties indicated that there are currently no motions to be addressed.
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`The parties are reminded that, except as otherwise provided in the Rules,
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`Board authorization is required before filing a Motion. See 37 C.F.R. § 42.20(b).
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`A party seeking to file a motion should request a conference to obtain authorization
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`to file the motion. No motions are authorized in this proceeding at this time.
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` Although Board authorization is not required for the Patent Owner to file
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`one motion to amend the patent by cancelling or substituting claims, we remind
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`Patent Owner of the requirement to request a conference with the Board before
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`filing a motion to amend. See 37 C.F.R. § 42.121(a). The conference should take
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`place at least two weeks before filing the motion to amend. The Board takes this
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`opportunity to remind the Patent Owner that a motion to amend must explain in
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`detail how any proposed substitute claim obviates the grounds of unpatentability
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`authorized in this proceeding, and clearly identify where the corresponding written
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`description support in the original disclosure can be found for each claim added. If
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`the motion to amend includes a proposed substitution of claims beyond a one-for-
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`one substitution, the motion must explain why more than a one-for-one substitution
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`of claims is necessary. For further guidance regarding these requirements, Patent
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`Owner is directed to several decisions concerning motions to amend, including
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`Nichia Corporation v. Emcore Corporation, IPR2012-00005, Paper No. 27
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`(June 3, 2013); Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper
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`No. 26 (June 11, 2013), Paper No. 66 (January 7, 2014); ZTE Corp. v.
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`ContentGuard Holdings, IPR2013-00136, Paper 33 (November 7, 2013); and
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`Invensense, Inc. v. STMicroelectronics, Inc., IPR2013-00241, Paper No. 21,
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`(January 9, 2014); Toyota Motor Corp. v. American Vehicular Sciences LLC,
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`IPR2013-00423, Paper No. 27 (March 7, 2014); Corning Optical Communications
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`RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19 (Oct. 30, 2014).
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`4
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`

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`IPR2014-00733; IPR2014-00766
`Patent 8,458,356 B2; 8,214,873
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`PETITIONER:
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`David L. Fehrman
`Mehran Arjomand
`Morrison & Foerster LLP
`patentdocket@mofo.com
`marjomand@mofo.com
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`PATENT OWNER:
`
`Reza Mollaaghababa
`Lana Gladstein
`Thomas Engellenner
`Pepper Hamilton LLP
`mollaaghababar@pepperlaw.com
`gladsteinl@pepperlaw.com
`engellennert@pepperlaw.com
`
`Christopher Horgan
`Concert Technology
`chris.horgan@concerttechnology.com
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`5