`571-272-7822
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` Paper 13
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`
` Entered: July 27, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`Cases IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-003481
`Patents 8,640,179, 8,205,237, 8,010,988, and 8,656,441
`_______________
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 We use this caption in this paper to indicate that this Order applies to, and is
`entered in all indicated cases. The parties are not authorized to use this caption.
`
`
`
`IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-00348
`Patents 8,640,179, 8,205,237, 8,010,988, and 8,656,441
`
`
`An initial conference call in inter partes reviews IPR2015-00343,
`IPR2015-00345, IPR2015-00347, and IPR2015-00348 occurred on July 24,
`2015. Respective counsel for Petitioner and Patent Owner, and Judges Turner,
`Pettigrew, and Tornquist were in attendance. The purpose of the call was to
`discuss proposed changes to the Scheduling Order (Paper 7) and any motions
`that the parties intend to file. Neither party filed a proposed motions list prior
`to the initial conference call.
`The parties had no specific issues with the Scheduling Order. The parties
`indicated that there was a protective order in place in the ongoing, stayed
`litigation, but no material that requires such protection has been made of record
`in the instant proceedings. The parties also indicated that, while some
`settlement discussions may have occurred because of required mediation in the
`district court litigation, there is presently no current path to settlement between
`the parties at this time.
`The parties are reminded that prior authorization is required for all
`motions filed with the Board. Petitioner further indicated that it did not oppose
`the Patent Owner’s Motion for Pro Hac Vice admission of Greg Dovel (Paper
`10), and we indicated that a decision on that Motion would be forthcoming.
`Patent Owner also indicated that no decision on whether to file a Motion to
`Amend had yet been made.
`The Board directs the attention of the parties to Nichia Corporation v.
`Emcore Corporation, IPR2012-00005, Paper Nos. 27 and 68; Idle Free
`Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper Nos. 26 and 66; and
`ZTE Corporation and ZTE (USA) Inc. v. Contentguard Holdings, Inc.,
`
`2
`
`
`
`IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-00348
`Patents 8,640,179, 8,205,237, 8,010,988, and 8,656,441
`
`IPR2013-00136, Paper No. 33, which discuss the requirements of a motion to
`amend claims. See also Microsoft Corp. v. Proxyconn, Inc., No. 14-1542, -
`1543 (Fed. Cir. June 16, 2015) (establishing that patent owner has the burden of
`establishing that it is entitled to the proposed amended claims) and
`MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15,
`2015) (providing further guidance on the meaning of “prior art of record” and
`“prior art known to the patent owner” in the context of motions to amend). If
`the Patent Owner should decide to file a motion to amend claims, it must
`initiate a conference call with the Board prior to such filing to confer about the
`intended motion.
`We also indicated the criticality of the date for Oral Hearing (Paper 7,
`Due Date 7: March 9, 2016), given the large number of post-grant proceedings,
`such that changes to that Due Date are often difficult to accommodate. We
`further indicated that the total time devoted to the Oral Hearing, if requested,
`would be dependent on the number of issues in the proceedings, as briefed in
`Patent Owner’s Response and Petitioner’s Reply.
`
`
`
`3
`
`
`
`IPR2015-00343, IPR2015-00345, IPR2015-00347, and IPR2015-00348
`Patents 8,640,179, 8,205,237, 8,010,988, and 8,656,441
`
`FOR PETITIONER:
`James J. Elacqua
`Douglas R. Nemec
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`James.Elacqua@skadden.com
`Douglas.Nemec@skadden.com
`
`FOR PATENT OWNER:
`Charles R. Macedo
`Brian A. Comack
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`cmacedo@arelaw.com
`N1-Google-IPR@arelaw.com
`
`
`4
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