`571-272-7822
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`
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`Paper 12
`Entered: July 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY CORPORATION, SONY ELECTRONICS INC.,
`SONY MOBILE COMMUNICATIONS AB, and
`SONY MOBILE COMMUNICATIONS (USA) INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`
`Case IPR2015-00158
`Patent 7,296,121 B2
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
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`ORDER
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`Conduct of the Proceeding
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`37 C.F.R. § 42.5
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`
`
`
`
`
`
`IPR2015-00158
`Patent 7,296,121 B2
`
`
`A conference call in the above proceeding was held on July 21, 2015,
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`between counsel for Patent Owner, counsel for Petitioner in this case,
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`counsel for Petitioner in IPR2015-00159 and IPR2015-00163,1 and
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`Judges Bisk, Powell, and Begley. Patent Owner initiated the conference call
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`to confer with us regarding filing a motion to amend in this case and in
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`IPR2015-00159 and IPR2015-00163.
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`DISCUSSION
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`In the call, we explained that a motion to amend under 37 C.F.R.
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`§ 42.121 may cancel claims and/or propose substitute claims. As we further
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`explained, a motion to amend may propose only a reasonable number of
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`substitute claims, and there is a rebuttable presumption that only one
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`proposed substitute claim will generally be needed to replace each
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`challenged claim. 37 C.F.R. § 42.121(a)(3). We also noted that our rules
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`were amended on May 19, 2015 to change the page limits for certain papers
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`associated with a motion to amend. See Amendments to the Rules of
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`Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
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`28,561, 28,565 (May 19, 2015).
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`Additionally, we noted that further guidance regarding the mechanics
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`and substance of motions to amend appears in Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013) (Paper 26), as
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`well as MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB
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`July 15, 2015) (Paper 42). The latter paper clarifies certain guidance
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`provided in the former.
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`
`1 In IPR2015-00159 and IPR2015-00163, a different set of petitioners
`challenge the patent that is at issue in this case.
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`2
`
`
`
`IPR2015-00158
`Patent 7,296,121 B2
`
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`Patent Owner inquired whether it should 1) prepare substantively
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`identical motions for this case and IPR2015-00159 and IPR2015-00163, or
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`2) prepare substantively unique motions for this case and each of the others.
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`We advised that Patent Owner should do the latter, taking care that any
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`amendments in proposed substitute claims in one case do not conflict with
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`amendments in proposed substitute claims in other cases.
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`
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`In consideration of the foregoing, it is:
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`ORDER
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`ORDERED that Patent Owner has satisfied the requirement of
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`conferring with us prior to filing a Motion to Amend under 37 C.F.R.
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`§ 42.121(a).
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`
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`3
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`
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`IPR2015-00158
`Patent 7,296,121 B2
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`PETITIONER:
`
`Lewis Popovski
`lpopovski@kenyon.com
`
`Michael Sander
`msander@kenyon.com
`
`Zaed Billah
`zbillah@kenyon.com
`
`
`
`PATENT OWNER:
`
`Jomathan Baker
`jbaker@farneydaniels.com
`
`Bryan Atkinson
`memoryintegrityIPR@farneydaniels.com
`
`
`
`4