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Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 19
`Entered: September 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ESSELTE CORPORATION, ESSELTE AB, AND ESSELTE LEITZ
`GMBH & CO. KG,
`Petitioner,
`
`v.
`
`DYMO B.V.B.A. AND SANFORD L.P.,
`Patent Owner.
`
`Case IPR2015-00766 (Patent 7,990,567 B2)
`Case IPR2015-00771 (Patent 7,140,791 B2)
`Case IPR2015-00779 (Patent 6,152,623)
`Case IPR2015-00781 (Patent 6,890,113 B2) 1
`
`
`
`
`
`
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`INITIAL CONFERENCE SUMMARY
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`not authorized to use this caption for any subsequent papers.
`
`

`
`IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791),
`IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113)
`
`
`
`On September 21, 2015, Judges McKone, Parvis, and Kokoski held an
`initial conference with counsel for the parties in the above-referenced cases.
`The following subjects were discussed during the conference.
`Scheduling Order
`In each of the above-referenced cases, the parties filed a stipulation to
`modify Due Dates 1 through 4. Paper 19. 2 The parties do not have other
`proposed changes to the Scheduling Order. We reminded the parties that, if
`the parties stipulate to any changes in Due Dates 1 through 5 of the
`Scheduling Order, the stipulated dates cannot be later than Due Date 6, and
`the parties promptly must file any additional joint stipulation indicating such
`changes.
`Counsel for Patent Owner
`On April 6, 2015, Patent Owner filed Mandatory Disclosures
`identifying as lead and back-up counsel, Mr. Mitchell G. Stockwell and
`Mr. Wab P. Kadaba, respectively, of Kilpatrick Townsend & Stockton LLP.
`Paper 7. On May 18, 2015, Patent Owner filed Updated Mandatory Notices
`identifying as lead counsel Mr. W. Karl Renner of Fish & Richardson P.C.
`Paper 9. On July 16, 2015, Patent Owner filed a Notice of Designation of
`Additional Back-up Counsel identifying as back-up counsel Mr. Thad C.
`Kodish of Fish & Richardson P.C. Paper 13. Mr. Kodish participated on
`behalf of the Patent Owner in the call on September 21, 2015.
`We reminded the parties that although a party may designate lead
`counsel and back-up counsel (37 C.F.R. § 42.10(a)), counsel may not
`
`
`2 Unless otherwise noted, citations herein will be to IPR2015-00766.
`
`2
`
`

`
`IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791),
`IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113)
`
`withdraw from a proceeding before the Board unless the Board authorizes
`such withdrawal (37 C.F.R. § 42.10(e)). Mr. Kodish indicated that he will
`confer with his co-counsel to determine if they wish to withdraw and, if so,
`they will request authorization to file a motion to withdraw.
`Motion to Seal
`On June 16, 2015, Patent Owner filed a Motion to Seal an Agreement
`(Exhibit 2002) and a Disclosure Schedule (Exhibit 2003). Paper 12. We
`reminded the parties that there is a strong public policy for making all
`information filed in inter partes review proceedings open to the public.
`See Garmin Int’l, Inc. v. Cuozzo Speed Techs., LLC, Case IPR2012-00001
`(PTAB, March 14, 2013) (Paper 34). The standard for granting a motion to
`seal is “good cause.” 37 C.F.R. § 42.54.
`We defer ruling on Patent Owner’s Motion to Seal (Paper 12). The
`parties agree to meet and confer to work on a stipulation that would avoid
`any necessity for sealing the documents. If such a joint stipulation is filed,
`the parties will request that we expunge Exhibits 2002 and 2003. If the
`parties are unable to reach a stipulation, the parties must alert the Board and
`seek further guidance on resolving the issue of confidentiality.
`Other Motions
`Prior to the conference call, Petitioner submitted a paper indicating it
`may want to file certain motions if deemed necessary later in the proceeding.
`Paper 18. During the call, Petitioner confirmed that at this time it does not
`seek authorization to file any particular motions. Patent Owner did not
`submit a list of proposed motions.
`
`3
`
`

`
`IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791),
`IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113)
`
`At this time, we do not authorize any motions. As a reminder to the
`parties, the parties must seek authorization before filing motions that are not
`authorized in the Scheduling Order (Paper 15) or by rule.
`Additionally, we asked whether Patent Owner contemplates a motion
`to amend. Patent Owner indicated that it is unsure whether it will file a
`motion to amend. We reminded Patent Owner that, if Patent Owner should
`decide to file a motion to amend, Patent Owner must request a conference
`with us, preferably at least ten business days prior to the filing due date.
`Accordingly, it is:
`ORDERED that the parties shall meet and confer promptly on a
`stipulation regarding Exhibits 2002 and 2003 and jointly report the results of
`their conference to the Board, by email to Trials@uspto.gov, no later than
`October 7, 2015; and
`FURTHER ORDERED that no additional motions are authorized at
`this time.
`
`
`4
`
`

`
`IPR2015-00766 (Patent 7,990,567), IPR2015-00771 (Patent 7,140,791),
`IPR2015-00779 (Patent 6,152,623), IPR2015-00781 (Patent 6,890,113)
`
`PETITIONER:
`Douglas J. Kline
`dkline@goodwinprocter.com
`
`Charles H. Sanders
`csanders@goodwinprocter.com
`
`Jay C. Chiu
`jchiu@goodwinprocter.com
`
`Sumedha Ahuja
`sahuja@goodwinprocter.com
`
`PATENT OWNER:
`
`Walter Renner
`axf@fr.com
`
`Thad Kodish
`IPR41578-0003IP1@fr.com
`
`5

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