`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`Paper 17
`Entered: July 31, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00660
`Patent 5,745,574
`_______________
`
`
`Before JENNIFER S. BISK, KRISTEN L. DROESCH,
`and JUSTIN BUSCH, Administrative Patent Judges.
`
`
`BUSCH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
` 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`A telephone conference call was held on July 30, 2014. The participants of
`
`Intellectual Ventures Exhibit 2008
`IBM v. Intellectual Ventures
`IPR2014-01410
`
`
`
`IPR2014-00660
`Patent 5,745,574
`
`the call were Judges Bisk, Droesch, and Busch, and respective counsel for the
`
`parties. Petitioner initiated the call seeking authorization to file a third corrected
`
`petition and arranged for the services of a court reporter.
`
`During the conference call, Petitioner explained that a limitation in claim 30,
`
`identified elsewhere in the petition as element 30.a.1, was inadvertently omitted
`
`from a claim chart related to Petitioner’s challenge to claim 30 as anticipated by
`
`Kapidzic. Petitioner argued the omission was a clerical or typographical error and
`
`sought authorization to file a motion to correct such an error under 37 C.F.R.
`
`§ 42.104(c). However, Petitioner stated that the petition included sufficient
`
`argument and evidence such that Petitioner’s challenge to claim 30 as anticipated by
`
`Kapidzic was still supported. Petitioner also referred to the substance of claim 18
`
`and argued the limitation identified as element 30.a1 was, for the purposes of the
`
`application of Kapidzic, the same as a limitation identified in the claim chart for
`
`claim 18. Petitioner argued Patent Owner would not be prejudiced by the filing of a
`
`third corrected petition because Petitioner elected not to respond substantively to
`
`the challenges in the Patent Owner preliminary response.
`
`
`
`Patent Owner argued the proposed changes were substantive omissions,
`
`rather than clerical or typographical, and that Patent Owner would be prejudiced
`
`because the preliminary response was already filed with arguments relating to this
`
`particular omission.
`
`
`
`We are not persuaded that the amendment Petitioner seeks to make is the
`
`result of a typographical or clerical error. Thus, 37 C.F.R. § 42.104(c) does not
`
`apply. Moreover, Patent Owner has already filed a preliminary response,
`
`
`
`2
`
`
`
`IPR2014-00660
`Patent 5,745,574
`
`introducing delay into the proceeding, affecting the Patent Trial and Appeal Board’s
`
`ability to render a decision to institute within the statutory deadline provided by 35
`
`U.S.C. § 314(b). Therefore, we do not authorize Petitioner to file a motion to
`
`correct the petition for the third time.
`
`
`
`
`
`It is
`
`ORDERED that Petitioner, within seven days of the date of this
`
`communication, file a copy of the transcript of the conference call as an exhibit.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00660
`Patent 5,745,574
`
`
`PETITIONER:
`
`Kenneth Adamo
`kenneth.adamo@kirkland.com
`
`Alicia Shah
`alicia.shah@kirkland.com
`
`Brent Ray
`brent.ray@kirkland.com
`
`Joel Merkin
`jmerkin@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`
`PATENT OWNER:
`
`Brenton Babcock
`2BRB@knobbe.com
`
`Ted Cannon
`2tmc@knobbe.com
`
`
`
`
`4
`
`
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
