`Date: August 31, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`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
`
`
`
`1. Introduction
`On August 28, 2015, a conference call was held between counsel for the
`
`respective parties and Judges Cocks, Jung, and Goodson. US Endodontics, LLC
`(“US Endodontics”) was represented by Jeffrey Ginsberg. Gold Standard
`Instruments, LLC (“Gold Standard”) was represented by Joseph Hynds. The
`purpose of the call was to discuss Petitioner’s request for authorization to file a
`motion to submit supplemental information (“Motion”) pursuant to 37 C.F.R.
`§ 42.123.
`
`
`
`2. Discussion
`During the call, US Endodontics stated that it was seeking to submit the
`
`prosecution history of U.S. Patent No. 8,876,991, another patent owned by Gold
`Standard. US Endodontics explained that it believed that statements made by Gold
`Standard in that prosecution history are relevant to the claims for which trial has
`been instituted in this proceeding.
`
`Gold Standard stated that it does not oppose US Endodontics’s request for
`authorization to file the noted Motion. Gold Standard represented that it also
`would not oppose the Motion if filed.
`
`37 C.F.R. § 42.123 states, in part, the following:
`
`§ 42.123 Filing of supplemental information.
`(a) Motion to submit supplemental information. Once a trial
`has been instituted, a party may file a motion to submit supplemental
`information in accordance with the following requirements:
`
`(1) A request for the authorization to file a motion to
`submit supplemental information is made within one month of
`the date for which the trial has been instituted.
`
`(2) The supplemental information must be relevant to a
`claim for which the trial has been instituted.
`
`
`
`
`
`
`2
`
`
`
`
`
`
`IPR2015-00632
`Patent 8,727,773
`
`
`In this case, because US Endodontics has met those requirements, and
`
`because Gold Standard does not oppose the request to file, or the filing of, the
`Motion, the panel authorized US Endodontics to file the Motion. US Endodontics
`subsequently filed the Motion as Paper 37.1
`
`During the call, Gold Standard also requested that it be permitted to file
`objections to evidence (“Objections”) that it had served timely on US Endodontics,
`but had neglected to file as now required by 37 C.F.R. § 42.64(b)(1). Gold
`Standard explained that it had not taken into account appropriately the recent
`change in the rules requiring the filing of the objections. After inquiry from the
`panel as to any objection to such filing, US Endodontics stated that it desired to
`confer with its client. The panel indicated that if US Endodontics does object, it
`should schedule a conference call with the panel and opposing counsel. US
`Endodontics has not arranged for such a call, and subsequently has conveyed to
`Board personnel via e-mail, that it does not object to the late filing of Gold
`Standard’s Objections to evidence.
`
`Because US Endodontics does not object to the filing of the noted
`Objections, and US Endodontics is not prejudiced by the late filing of the
`Objections, we authorize Gold Standard to file the Objections.2
`
`
`
`
`1 Given the circumstances of this case, the panel also authorized US Endodontics to
`file provisionally the documents that it is seeking to have entered as supplemental
`information. Those documents have been entered provisionally as Exhibit 1030.
`2 In this case, our authorization is retroactive, as Gold Standard has filed the
`Objections as Paper 35.
`
`3
`
`
`
`
`IPR2015-00632
`Patent 8,727,773
`
`
`
`3. Order
`
`
`
`It is
`
`ORDERED that US Endodontics is authorized to file its requested Motion to
`
`submit supplemental information; and
`
`FURTHER ORDERED that Gold Standard is authorized to file its
`Objections to US Endodontics’s evidence.
`
`
`
`
`
`For PETITIONER:
`
`Jeffrey S. Ginsberg, Esq.
`jginsberg@kenyon.com
`
`Matthew G. Berkowitz, Esq.
`mberkowitz@kenyon.com
`
`Eric T. Schreiber, Esq.
`eschreiber@kenyon.com
`KENYON & KENYON LLP
`
`
`
`For PATENT OWNER:
`
`Joseph Hynds
`jhynds@rothwellfigg.com
`
`R. Elizabeth Brenner-Leifer
`Ebrenner@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`
`
`
`4
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