throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 14
`Entered: July 23, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FACEBOOK, INC. and
`INSTAGRAM, LLC,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2015-00778
`Patent 6,038,295
`_______________
`
`Before JAMESON LEE, BART A. GERSTENBLITH, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`

`
`IPR2015-00778
`Patent 6,038,295
`
`
`
`On June 16, 2015, the United States Court of Appeals for the Federal
`
`Circuit issued an en banc opinion in Williamson v. Citrix Online, LLC,
`
`No. 2013-1130, 2015 WL 3687459 (Fed. Cir. June 16, 2015), which
`
`modified the preexisting law regarding when to regard a claim recitation as a
`
`means-plus-function element under 35 U.S.C. § 112, sixth paragraph. We
`
`seek additional briefing from the parties addressing whether, in light of
`
`Williamson, the term “telephone unit” in claim 17 of U.S. Patent
`
`No. 6,038,295 should be read as a means-plus-function element under
`
`35 U.S.C. § 112, sixth paragraph. If either Petitioner or Patent Owner, or
`
`both, regard “telephone unit” as a means-plus-function element, the
`
`corresponding structure, material, or acts described in the specification for
`
`that means-plus-function element should also be identified in the additional
`
`briefing.
`
`It is
`
`
`
`ORDERED that Petitioner makes its submission, limited to five pages
`
`not including the cover sheet or certificate of service, by July 31, 2015;
`
`
`
`FURTHER ORDERED that Patent Owner makes its submission, also
`
`limited to five pages not including the cover sheet or certificate of service,
`
`within five business days of the filing of Petitioner’s submission; and
`
`
`
`FURTHER ORDERED that no additional evidence should be
`
`submitted.
`
`
`
`2
`
`
`
`
`
`

`
`3
`
`IPR2015-00778
`Patent 6,038,295
`
`For PETITIONER:
`
`Heidi Keefe
`Andrew Mace
`Mark Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`
`
`For PATENT OWNER:
`
`Tarek Fahmi
`ASCEND LAW GROUP, PC
`tarek.fahmi@ascendalaw.com

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