Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: March 9, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC.1
`Petitioner,
`
`v.
`
` AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01181, -01182, -011842
`Patent 8,532,641 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Petitioner represents that Samsung Telecommunications America, LLC, an
`originally-named Petitioner in this case, was merged into Samsung
`Electronics America, Inc. on January 1, 2015. See IPR2014-01181, Paper 9.
`2 This order summarizes a consolidated conference call pertaining to three related
`cases. We exercise our discretion to issue one decision to be entered in each case.
`The parties are not authorized to use this style heading in their papers.
`
`
`
`
`1
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: March 9, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` SAMSUNG ELECTRONICS CO., LTD,
`SAMSUNG ELECTRONICS AMERICA, INC.1
`Petitioner,
`
`v.
`
` AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Cases IPR2014-01181, -01182, -011842
`Patent 8,532,641 B2
`____________
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 Petitioner represents that Samsung Telecommunications America, LLC, an
`originally-named Petitioner in this case, was merged into Samsung
`Electronics America, Inc. on January 1, 2015. See IPR2014-01181, Paper 9.
`2 This order summarizes a consolidated conference call pertaining to three related
`cases. We exercise our discretion to issue one decision to be entered in each case.
`The parties are not authorized to use this style heading in their papers.
`
`
`
`
`1
`
`
`
`IPR2014-01181, -01182, -01184
`8,532,641 B2
`
`
`
`A consolidated initial conference call was held on March 5, 2015,
`
`between counsel for Patent Owner and Petitioners, and Judges Turner,
`
`Pettigrew, and Tornquist. The purpose of the call was to discuss any
`
`proposed changes to the Scheduling Order and any motions the parties
`
`intend to file. The following issues were discussed.
`
`Scheduling Order/Joinder
`
`
`
`During the call, neither party requested a modification to the dates set
`
`forth in the Scheduling Order. Petitioner did note, however, that two new
`
`cases, IPR2015-00820 and IPR2015-00821, were recently filed relating to
`
`U.S. Patent No. 8,532,641, and that it was seeking to join the new cases with
`
`IPR2014-01181 and IPR2014-01184, respectively. Petitioner asserted that
`
`such a joinder, if granted, would require a modification to the schedule for
`
`the three present IPR proceedings.
`
`
`
`
`
`During the call, Petitioner confirmed that the two new petitions have
`
`yet to receive a filing date and that Patent Owner has not yet filed an
`
`appearance in the new proceedings. The Board noted that, under these
`
`circumstances, it is premature to discuss joinder of the new cases or
`
`modifying the schedule for IPR2014-01181, -01182, and -01184.
`
`Protective Order
`
`No protective order has been entered in this proceeding.
`
`Motions to Exclude
`
`Both parties indicated that they make seek to file a motion to exclude
`
`
`
`
`
`evidence. The parties are directed to the Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (Section K), 37 C.F.R. §
`
`42.64(c), and the Scheduling Order for guidance on the form, content, and
`
`timing of motions to exclude.
`
`
`
`
`
`IPR2014-01181, -01182, -01184
`8,532,641 B2
`
`
`Motion to Amend
`
`
`
`Patent Owner advised that it may file a motion to amend. If Patent
`
`Owner decides to file a motion to amend, Patent Owner shall arrange a
`
`conference call no later than one week before the filing deadline to discuss
`
`the proposed motion. See 37 C.F.R. § 41.121(a). Before preparing any
`
`motion, the Board advised Patent Owner to review the body of cases that
`
`have been issued previously by the Board related to motions to amend. The
`
`parties are further directed to Nichia Corp. v. Emcore Corp., IPR2012-
`
`00005, Paper Nos. 27 and 68; Idle Free Sys., Inc. v. Bergstrom, Inc.,
`
`IPR2012-00027, Paper Nos. 26 and 66; and ZTE Corp. v. Contentguard
`
`Holdings Inc., IPR2013-00136, Paper No. 33, which discuss the
`
`requirements of a motion to amend claims.
`
`Pro Hac Vice Admission
`
`
`
`Counsel for Petitioner indicated that they may seek Pro Hac Vice
`
`admission of additional counsel, which was previously authorized in the
`
`notice of filing date accorded. See, e.g., IPR2014-01181, Paper 3, 3
`
`(authorizing a motion for Pro Hac Vice admission).
`
`Consolidation
`
`
`
`During the call, Petitioner requested that the Board confirm that it will
`
`issue its final decisions in each of the three cases on the same day. The
`
`Board noted that it could not guarantee the issuance of judgments on the
`
`same day, but would be amenable to consolidating the three cases.
`
`Petitioner and Patent Owner did not object to consolidation, but noted that,
`
`due to the complexity of the issues presented in the three cases, additional
`
`pages for briefing may be required. The Board noted that it would consider
`
`authorizing a reasonable number of additional pages for briefing the
`
`
`
`
`
`IPR2014-01181, -01182, -01184
`8,532,641 B2
`
`consolidated case, and that the parties should confer as to the number of
`
`additional pages that would reasonably be required. After conferring on the
`
`matter, the parties shall provide a joint proposal to the Board by March 20,
`
`2015, setting forth the number of additional pages requested.
`
`
`
`
`
`It is, therefore,
`
`ORDERED that the parties shall submit on or before March 20, 2015,
`
`a joint proposal setting forth the number of additional pages requested for a
`
`consolidated proceeding involving IPR2014-01181, -01182, and -01184; and
`
`
`
`FURTHER ORDERED that no other motions, besides those discussed
`
`above or authorized by rule, are authorized at this time.
`
`
`
`
`
`IPR2014-01181, -01182, -01184
`8,532,641 B2
`
`PETITIONERS:
`
`J. Steven Baughman
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`
`PATENT OWNER:
`
`Ryan M. Schultz
`Thomas R. DeSimone
`ROBINS, KAPLAN, MILLER & CIRESI LLP
`rmschultz@rkmc.com
`trdesimone@rkmc.com
`
`
`
`
`
`
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