`571-272-7822
`
`Paper 10
`Date: May 21, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`US ENDODONTICS, LLC,
`Petitioner,
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2015-00632
`Patent 8,727,773 B2
`____________
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2015-00632
`Patent 8,727,773
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`
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`1. Introduction
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`
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`
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`On May 20, 2015, a conference call was held between counsel for the
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`respective parties and Judges Cocks, Jung, and Goodson. US Endodontics, LLC
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`(“Petitioner”) was represented by Jeffrey Ginsberg. Gold Standard Instruments,
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`LLC (“Patent Owner”) was represented by Joseph Hynds, Elizabeth Brenner-
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`Leifer, and Steven Lieberman1. The purpose of the call was to discuss:
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`(1) Petitioner’s request for authorization to file a motion to identify two additional
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`parties as real parties-in-interest; and (2) Petitioner’s objection to certain exhibits
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`submitted by Patent Owner as allegedly being incomplete.
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`
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`Petitioner had arranged for a court reporter on the call. When available,
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`Petitioner should file a transcript of the call using its next available exhibit number.
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`2. Discussion
`
`
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`During the call, Petitioner explained that Patent Owner’s Preliminary
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`Response (Paper 9) had raised a challenge to the Petition as failing to identify two
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`additional entities – Edge Endo, LLC and Guidance Endodontics, LLC – as real
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`parties-in-interest. Although Petitioner does not agree that those entities need to be
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`so identified, it sought leave to file a motion naming them as real parties-in-interest
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`as a matter of efficiency. Petitioner represented that it is still not barred by the
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`provision of 35 U.S.C. § 315(b). Patent Owner indicated that, if Petitioner is
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`authorized to file the motion, Patent Owner will oppose the motion.
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`
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`After conferring, the panel determined to authorize the filing of Petitioner’s
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`requested motion. The panel also authorized Patent Owner to file an opposition.
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`Petitioner’s motion is due no later than Wednesday, May 27, 2015, and shall not
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`
`1 A “Motion for Admission Pro Hac Vice of Steven Lieberman” currently is
`pending before the Board. See Paper 6. Counsel for Petitioner did not object to
`Mr. Lieberman’s participation in the call.
`
`2
`
`
`
`
`IPR2015-00632
`Patent 8,727,773
`
`
`exceed ten (10) pages in length. Patent Owner’s opposition is due no later than
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`
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`June 3, 2015, and shall not exceed ten (10) pages in length.
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`
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`During the call, Petitioner also raised objections to certain of Patent Owner’s
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`exhibits as being only portions of larger documents. Petitioner expressed a desire
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`for Patent Owner to file the absent content. After inquiry, the panel determined
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`that the issue is premature. The parties have not yet discussed the issue between
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`themselves, and both parties indicated that agreement likely could be reached
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`without Board involvement.
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`It is
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`3. Order
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`ORDERED that Petitioner is authorized to file its requested motion, which is
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`
`
`
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`due no later than Wednesday, May 27, 2015, and shall not exceed ten (10) pages in
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`length;
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`
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`FURTHER ORDERED that Patent Owner is authorized to file an opposition
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`to the motion, which is due no later than Wednesday, June 3, 2015, and shall not
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`exceed ten (10) pages in length; and
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`
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`FURTHER OREDERED that Petitioner must file a copy of the transcript of
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`the call, when it becomes available, as an exhibit.
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`3
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`IPR2015-00632
`Patent 8,727,773
`
`
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`For PETITIONER:
`
`
`Jeffrey Ginsberg
`jginsberg@kenyon.com
`
`Matthew Berkowitz
`mberkowitz@kenyon.com
`
`Eric Schreiber
`eschreiber@kenyon.com
`
`
`For PATENT OWNER:
`
`Joseph Hynds
`jhynds@rfem.com
`
`Randy Brenner-Leifer
`Ebrenner@rothwellfigg.com
`
`
`
`
`4
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`
`
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