Trials@uspto.gov
`571-272-7822
`
`
`Paper 6
`Entered: September 30, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SKYHAWKE TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`L&H CONCEPTS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-01485
`Patent 5,779,566
`____________
`
`
`
`
`
`Before JAMES T. MOORE and PATRICK R. SCANLON, Administrative
`Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`

`

`IPR2014-01485
`Patent 5,779,566
`
`
`The Petition for inter partes review in the above proceeding indicates
`
`that this proceeding is related to two other proceedings presently before this
`
`panel, IPR2014-00437 and IPR214-00438. Paper 5.1 All three proceedings
`
`involve the same patent, U.S. Patent No. 5,779,566 (“the ’566 patent”).
`
`Petitioner submitted, concurrently with the original Petition, a motion under
`
`35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) for joinder of the present
`
`Petition with IPR2014-00438. Paper 3.
`
`During the initial conference call for the related proceedings, held on
`
`September 18, 2014, Petitioner informed the Board that the present Petition
`
`had been filed, and the parties agreed—at least to some extent—to expedite
`
`this proceeding in an attempt to synchronize the final decisions in the three
`
`related proceedings. See IPR2014-00438, Paper 9.
`
`On September 26, 2014, respective counsel for the parties and Judges
`
`Moore and Scanlon participated in a conference call, requested by Petitioner,
`
`to discuss disagreement between the parties regarding the motion for joinder
`
`and the synchronizing of schedules in the proceedings.2 During the call,
`
`Petitioner stated that the present Petition was necessitated by Patent Owner
`
`asserting in the related district court case two claims of the ’566 patent,
`
`which were not previously asserted, after the case had been transferred from
`
`
`1 Paper 5 is a corrected Petition for inter partes review, filed September 25,
`2014. The original Petition for inter partes review (Paper 1) has been
`accorded the filing date of September 11, 2014. See Paper 4.
`2 We note that at the outset of the call, David Hoffman, participating on
`behalf of Patent Owner, stated for the record that neither he nor David
`Morris, also participating on behalf of Patent Owner, had power of attorney
`from Patent Owner. Mr. Hoffman indicated that, as Lead Counsel in the two
`related proceedings, he anticipated that such power of attorney would be
`forthcoming.
`
`
`
`2
`
`

`

`IPR2014-01485
`Patent 5,779,566
`
`the Eastern District of Texas to the Southern District of Mississippi.
`
`Petitioner also stated that the challenges to the claims in the present Petition
`
`are based on the same prior art and same grounds on which the challenges in
`
`IPR2014-00438 are based. Petitioner indicated that, while there seemed to
`
`have been a consensus between the parties and the Board to work together in
`
`an effort to “catch up” in the present proceeding during the initial conference
`
`call of September 18, 2014, Patent Owner has not agreed to file its
`
`Preliminary Response early.
`
`Patent Owner stated its belief that it is premature, at this time, to
`
`discuss scheduling in the present proceeding and noted that Petitioner is
`
`acting as though the motion for joinder being granted is a foregone
`
`conclusion. Patent Owner does not agree with this conclusion. Patent
`
`Owner, however, indicated it would be willing to consider some scheduling
`
`adjustments pending a decision on the motion for joinder.
`
`In summary, we see no reason that Patent Owner should be required
`
`to submit its Preliminary Response in this proceeding earlier than what is
`
`required by 37 C.F.R. § 42.107(b). For the sake of efficiency, however, if
`
`the motion for joinder is granted, we then direct the parties to discuss the
`
`scheduling issue and attempt to agree on reasonable adjustments to the
`
`schedule for synchronizing this proceeding with the two related proceedings.
`
`If the parties cannot come to an agreement during these discussions, they
`
`may contact the Board for further guidance.
`
`Accordingly, it is
`
`ORDERED that, if Patent Owner elects to file a Preliminary
`
`Response, such paper may be filed in accordance with 37 C.F.R.
`
`§ 42.107(b); and
`
`
`
`3
`
`

`

`IPR2014-01485
`Patent 5,779,566
`
`
`FURTHER ORDERED that, if Petitioner’s motion for joinder is
`
`granted in due course, the parties are then directed to confer on possible
`
`scheduling adjustments to synchronize this proceeding with its two related
`
`proceedings.
`
`
`
`PETITIONER:
`
`Thomas Fisher
`cpdocketfisher@oblon.com
`
`Scott McKeown
`cpdocketmckeown@oblon.com
`
`Christopher Ricciuti
`cricciuti@oblon.com
`
`Alexander Englehart
`cpdocketenglehart@oblon.com
`
`
`PATENT OWNER:
`
`JASON J YOUNG
`3001 W BIG BEAVER ROAD SUITE 624
`TROY, MI 48084-3109
`
`David M. Hoffman
`Matthew K. Wernli
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`
`
`
`
`
`4
`
`