`571-272-7822
`
`Paper 26
`Entered: July 23, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO. LTD,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`MEMORY INTEGRITY, LLC,
`Patent Owner.
`
`Cases IPR2015-00159 and IPR2015-00163
`Patent 7,296,121 B21
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`POWELL, Administrative Patent Judge.
`
`ORDER
`
`Conduct of the Proceeding
`
`37 C.F.R. § 42.5
`
`1 This Decision addresses issues pertaining to each of these cases. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2015-00159 and IPR2015-00163
`Patent 7,296,121 B2
`
`
`
`A conference call in the above proceedings was held on July 21, 2015,
`
`between counsel for Patent Owner, counsel for Petitioner in these cases,
`
`counsel for Petitioner in IPR2015-00158,2 and Judges Bisk, Powell, and
`
`Begley. Patent Owner initiated the conference call to confer with us
`
`regarding filing a motion to amend in these cases and in IPR2015-00158.
`
`DISCUSSION
`
`In the call, we explained that a motion to amend under 37 C.F.R.
`
`§ 42.121 may cancel claims and/or propose substitute claims. As we further
`
`explained, a motion to amend may propose only a reasonable number of
`
`substitute claims, and there is a rebuttable presumption that only one
`
`proposed substitute claim will generally be needed to replace each
`
`challenged claim. 37 C.F.R. § 42.121(a)(3). We also noted that our rules
`
`were amended on May 19, 2015 to change the page limits for certain papers
`
`associated with a motion to amend. See Amendments to the Rules of
`
`Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg.
`
`28,561, 28,565 (May 19, 2015).
`
`Additionally, we noted that further guidance regarding the mechanics
`
`and substance of motions to amend appears in Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013) (Paper 26), as
`
`well as MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (PTAB
`
`July 15, 2015) (Paper 42). The latter paper clarifies certain guidance
`
`provided in the former.
`
`Patent Owner inquired whether it should 1) prepare substantively
`
`identical motions for these cases and IPR2015-00158, or 2) prepare
`
`
`2 In IPR2015-00158, a different set of petitioners challenge the patent that is
`at issue in these cases.
`
`2
`
`
`
`IPR2015-00159 and IPR2015-00163
`Patent 7,296,121 B2
`
`
`substantively unique motions for each of the cases. We advised that Patent
`
`Owner should do the latter, taking care that any amendments in proposed
`
`substitute claims in one case do not conflict with amendments in proposed
`
`substitute claims in other cases.
`
`Petitioner inquired about provisions for potentially changing due dates
`
`related to responding to any motions to amend that Patent Owner may file.
`
`We reminded the parties that they are authorized to stipulate changes to due
`
`dates 1 through 5 in our scheduling order. IPR2015-00158, Paper 8, 1;
`
`IPR2015-00159, Paper 13, 1; IPR2015-00163, Paper 19, 1. We encouraged
`
`the parties to cooperate to resolve any issues that may arise regarding due
`
`dates. Additionally, we noted that if the parties should have a due date issue
`
`they cannot resolve after collaborating, they may contact us to address the
`
`issue.
`
`
`
`In consideration of the foregoing, it is:
`
`ORDER
`
`ORDERED that Patent Owner has satisfied the requirement of
`
`conferring with us prior to filing a Motion to Amend under 37 C.F.R.
`
`§ 42.121(a).
`
`
`
`
`
`3
`
`
`
`IPR2015-00159 and IPR2015-00163
`Patent 7,296,121 B2
`
`
`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
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