`IPR2014-00898
`110900-0004-657
`U.S. Patent No. 7,151,027
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`MACRONIX INTERNATIONAL CO., LTD., MACRONIX ASIA LIMITED,
`MACRONIX (HONG KONG) CO., LTD., and MACRONIX AMERICA, INC.
`Petitioner
`
`v.
`
`SPANSION LLC
`Patent Owner
`______________
`
`Case IPR2014-00898
`Patent 7,151,027 B1
`______________
`
`Before the Honorable DEBRA K. STEPHENS, JUSTIN T. ARBES, and RICHARD
`E. RICE, Administrative Patent Judges.
`
`PATENT OWNER SPANSION LLC’S LIST OF PROPOSED MOTIONS
`
`
`
`Further to the Board’s Scheduling Order (Paper 14) setting an Initial
`
`Conference Call for August 28, 2014, and directing the parties to pages 48,765-66 of
`
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48,765-66 (Aug. 14, 2012), Patent
`
`Owner, Spansion LLC (“Patent Owner”) hereby submits a list of proposed motions
`
`presently contemplated by Patent Owner and which Patent Owner intends to raise
`
`during the Initial Conference Call:
`
` A possible motion for protective order pursuant to Rule 42.54;
`
`
`
`Attorney Docket No
`IPR2014-00898
`110900-0004-657
`U.S. Patent No. 7,151,027
` A possible motion to amend one or more claims for which inter partes
`
`review has been instituted pursuant to Rule 42.121; and
`
` Potential motion(s) for Pro Hac Vice Admission pursuant to Rule 42.10(c)
`
`(as previously authorized by the Board in Paper 5).
`
`Although these are, as noted, the motions presently contemplated by Patent Owner, it
`
`is Patent Owner’s understanding that, as stated in the Trial Practice Guide (at 48,765)
`
`“[s]ubmission of [this] list would not preclude the filing of additional motions not
`
`contained in the list.”
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`August 26, 2014
`
`
`
`By: /J. Steven Baughman/
`Gabrielle E. Higgins (Backup Counsel)
`J. Steven Baughman (Lead Counsel)
`Reg. No. 38,916
`Reg. No. 47,414
`ROPES & GRAY LLP
`ROPES & GRAY LLP
`1900 University Avenue – Suite 600
`One Metro Center, 700 12th St. – Ste. 900
`East Palo Alto, CA 94303
`Washington, DC 20005-3948
`P: 650-617-4000 /F: 650-617-4090
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`Attorneys for Patent Owner, Spansion LLC
`
`
`
`
`
`
`
`2
`
`
`
`IPR2014-00898
`U.S. Patent No. 7,151,027
`
`
`Attorney Docket No
`110900-0004-657
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of PATENT OWNER
`
`
`
`SPANSION LLC’S LIST OF PROPOSED MOTIONS has been served in its
`
`entirety by causing the aforementioned document to be electronically mailed, pursuant
`
`to the Petitioner and Patent Owner’s agreement, to the following attorneys of record
`
`for the Petitioner listed below:
`
`
`Petitioner’s Counsel
`of Record:
`
`
`Michael M. Murray (mmurray@winston.com)
`Michael J. Scheer (mscheer@winston.com)
`WINSTON & STRAWN LLP
`200 Park Ave.
`New York, NY 10166
`
`Andrew R. Sommer (ASommer@winston.com)
`Vivian S. Kuo (VKuo@winston.com)
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`
`
`Dated:
`
`August 26, 2014
`
`/Jordan M. Rossen/
`
`
`
`
`
`ROPES & GRAY LLP
`
`
`
`3
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