Trials@uspto.gov Paper No. 10 Paper No. 23
`
`571-272-7822
`Date Entered: September 24, 2015
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`____________
`
`
`
`
`Before BENJAMIN D. M. WOOD, BRIAN J. McNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`Date Entered: September 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WHATSAPP INC. and FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`TRIPLAY, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`____________
`
`
`
`
`Before BENJAMIN D. M. WOOD, BRIAN J. McNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`
`
`An initial conference in this proceeding, which concerns U.S. Patent
`
`8,332,475 B2 (the ’475 Patent), was conducted on September 18, 2015.
`
`WhatsApp Inc. and Facebook, Inc. (collectively, “Petitioner”) was represented by
`
`Reubin Chen and lead counsel, Heidi Keefe. Triplay, Inc. (“Patent Owner”) was
`
`represented by lead counsel, Barry Schindler, back-up counsel Jeremy Mondalo,
`
`and Lennie Berch. The following subjects were discussed during the conference:
`
`Applicable Rules
`
`The parties are reminded that the Rules of Practice for Trials Before the
`
`Patent Trial and Appeal Board, as amended on May 19, 2015, are now in effect.
`
`Related Matters
`
`The parties stated that the ’475 Patent is not currently the subject of any re-
`
`examination proceeding. The parties also reported that the corresponding district
`
`court litigation has not been stayed at this time.
`
`Scheduling Order
`
`Both parties confirmed that they seek no changes to the current Scheduling
`
`Order. The parties are reminded that, without obtaining prior authorization from
`
`the Board, they may stipulate to different dates for DATES 1–5, as provided in the
`
`Scheduling Order, by filing an appropriate notice with the Board. The parties may
`
`not stipulate to any other changes to the Scheduling Order.
`
`Protective Order
`
`The parties have not discussed a protective order at this time. No protective
`
`order has been entered in this proceeding. The parties are reminded of the
`
`requirement for a protective order when filing a motion to seal. 37 C.F.R. § 42.54.
`
`If the parties have agreed to a proposed protective order, including the default
`
`Standing Protective Order, 77 Fed. Reg. 48756, App. B (Aug 14, 2012), they
`
`should file a signed copy of the proposed protective order with the motion to seal.
`
`
`
`2
`
`
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`
`If the parties propose a protective order other than or departing from the default
`
`Standing Protective Order, Office Trial Practice Guide, id., they must submit a
`
`joint, proposed protective order, accompanied by a red-lined version based on the
`
`default Standing Protective Order in Appendix B to the Board’s Office Patent Trial
`
`Practice Guide. See id. at 48769.
`
`We also remind the parties of the expectation that confidential information
`
`relied upon or identified in a final written decision will be made public. Id. at
`
`48760. Confidential information that is subject to a protective order ordinarily
`
`becomes public 45 days after denial of a petition to institute or 45 after final
`
`judgment in a trial. Id. A party seeking to maintain the confidentiality of the
`
`information may file a motion to expunge the information from the record prior to
`
`the information becoming public. 37 C.F.R. § 42.56.
`
`Initial Disclosures and Discovery
`
`The parties have not stipulated to any initial disclosures at this time. The
`
`parties are reminded of the discovery provisions of 37 C.F.R. § 42.51–52 and
`
`Office Trial Practice Guide. See, 77 Fed. Reg. at 48761–2. The parties are
`
`reminded of amendments to 37 C.F.R. § 42. 64(b)(1) concerning the filing of
`
`objections and the service of supplemental evidence in response.
`
`Discovery requests are not to be filed with the Board without prior
`
`authorization. If the parties are unable to resolve discovery issues between them,
`
`the parties may request a conference with the Board.
`
`A motion to exclude, which does not require Board authorization, must be
`
`filed to preserve any objection. See, 37 C.F.R. § 37.64(c), Office Trial Practice
`
`Guide, 77 Fed. Reg. at 48767.
`
`
`
`3
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`
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`Case IPR2015-00740
`Patent 8,332,475 B2
`
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`The parties are reminded of the provisions for taking testimony found at
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`37 C.F.R. § 42.53 and the Office Trial Practice Manual at 77 Fed. Reg. at 48772,
`
`App. D.
`
`Motions
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`Prior to the initial conference, the parties each filed a list of anticipated
`
`motions. Petitioner requested authorization for a motion to file supplemental
`
`information in response to objections under FRE 702 that Patent Owner filed
`
`concerning the qualifications of Petitioner’s declarant. During the conference we
`
`discussed that a motion to file supplemental information under 37 C.F.R. § 123(a),
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`which must be filed within one month of the date trial is instituted and be relevant
`
`to a claim for which trial is instituted, would not be responsive to an evidentiary
`
`objection. Instead Petitioner should respond to Patent Owner’s evidentiary
`
`objection by serving supplemental evidence within ten business days of the
`
`objection in accordance with 37 C.F.R. 64(b)(2). Petitioner noted that it would
`
`serve its supplemental evidence on September 21, 2015. It is not necessary for
`
`Petitioner to file the supplemental evidence, although Petitioner may later file it as
`
`part of response to a motion to exclude. Patent Owner noted that it would defer
`
`filing a motion to exclude the testimony to which it objected, pending its review of
`
`the supplemental evidence. Authorization to file a motion to exclude is not
`
`required. The last date to file a motion to exclude is specified in the Scheduling
`
`Order.
`
`Before the conference, Patent Owner had advised us that it planned to seek
`
`authorization to file a motion for additional discovery. However, after a meet and
`
`confer, the parties agreed that such a motion is not necessary at this time.
`
`The parties are reminded that, except as otherwise provided in the Rules,
`
`Board authorization is required before filing a motion. 37 C.F.R. § 42.20(b). A
`
`
`
`4
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`
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`Case IPR2015-00740
`Patent 8,332,475 B2
`
`party seeking to file a motion should request a conference to obtain authorization
`
`to file the motion. No motions are authorized in this proceeding at this time.
`
`Although Board authorization is not required for the Patent Owner to file
`
`one motion to amend the patent by cancelling or substituting claims, we remind
`
`Patent Owner of the requirement to request a conference with the Board before
`
`filing a motion to amend. 37 C.F.R. § 42.121(a). The conference should take
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`place at least two weeks before filing the motion to amend. Parties should take
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`note of the guidance provided in Master Image3D, Inc. v. RealD, Inc., Case
`
`IPR2015-00040 (PTAB July 15, 2015)(Paper 42) and cases cited therein
`
`concerning the subject matter to be included in a motion to amend.
`
`Other Issues
`
`The Scheduling Order requested that the parties come to the initial
`
`conference prepared to discuss whether certain terms, such as “media block” and
`
`“access block” should be treated as means-plus-function limitations in view of
`
`Williamson v. Citrix Online, LLC, No. 2013-1130, 2015 WL 3687459 (Fed. Cir.
`
`June 16, 2015) (en banc in relevant part). Paper 14 2–3. During the conference,
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`the parties advised us that they had conferred and were prepared to stipulate that
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`the claims do not recite means-plus-function limitations. Noting that we may not
`
`agree with their conclusion, we asked the parties to address the constructions and
`
`the impact of Williamson in the Patent Owner Response and the Petitioner Reply.
`
`
`
`
`
`5
`
`
`
`6
`
`Case IPR2015-00740
`Patent 8,332,475 B2
`
`PETITIONER:
`
`Heidi Keefe
`hkeefe@cooly.com
`
`Andrew Mace
`amace@cooley.com
`
`
`
`PATENT OWNER:
`
`Barry Schindler
`njdocket@gtlaw.com
`
`Jeremy Monaldo
`Monaldo@fr.com
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