Trials@uspto.gov
`571-272-7822
`
`
`Paper 26
`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 IPR2014-00735
`Patent 6,618,593 B1
`____________
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, and
`PETER P. CHEN, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`571-272-7822
`
`
`Paper 26
`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 IPR2014-00735
`Patent 6,618,593 B1
`____________
`
`Before BRIAN J. McNAMARA, DAVID C. McKONE, and
`PETER P. CHEN, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`IPR2014-00735
`Patent 6,618,593 B1
`
`
`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-
`00735 (the “Subject Proceeding”), Black Hills Media, LLC (“Patent Owner”) was
`represented by lead counsel, N. Andrew Crain. 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 -0723
`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
`
`
`
`2
`
`
`
`IPR2014-00735
`Patent 6,618,593 B1
`
`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. See 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. 48,756, 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 48,769.
`We also remind the parties of the expectation that confidential information
`relied upon or identified in a final written decision will be made public. See id. at
`48,760. 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. See 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. See 37 C.F.R. § 42.56.
`
`
`
`
`3
`
`
`
`IPR2014-00735
`Patent 6,618,593 B1
`
`
`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 the
`Office Trial Practice Guide. See, 77 Fed. Reg. at 48,761–2. 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 48,767. 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 48,772,
`App. D.
`Motions
`During the conference, we addressed Patent Owner’s request for
`authorization to file a motion to compel Petitioner to produce a witness for
`deposition. That issue is addressed in a separate paper. There are currently no
`other 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. See 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. See 37 C.F.R. § 42.121(a). The conference should take
`
`
`
`4
`
`
`
`IPR2014-00735
`Patent 6,618,593 B1
`
`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
`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.
`
`5
`
`
`
`
`
`
`
`IPR2014-00735
`Patent 6,618,593 B1
`
`PETITIONER:
`
`Andrea Reister
`Gregory Discher
`COVINGTON & BURLING LLP
`areister@cov.com
`gdischer@cov.com
`
`
`PATENT OWNER:
`
`Andrew Crain
`Robert Gravois
`Kenneth Knox
`THOMAS | HORSTEMEYER LLP
`andrew.crain@thomashorstemeyer.com
`robert.gravois@thomashorstemeyer.com
`kenny.knox@thomashorstemeyer.com
`
`
`
`
`
`
`6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
