`
`Trials@uspto.gov
` Entered: July 15, 2016
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`ELBRUS INTERNATIONAL LIMITED,
`Patent Owner.
`____________
`
`Case IPR2015-01524
`Patent 6,366,130
`____________
`
`Before JUSTIN T. ARBES, JEFFREY W. ABRAHAM, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case IPR2015-01524
`Patent 6,366,130
`
`
`On July 14, 2016, a conference call was held between counsel for the
`parties and Judges Arbes, Galligan, and Abraham. The purpose of the call
`was to discuss Petitioner’s request for authorization to file a motion to
`withdraw lead counsel and Petitioner’s request for a two-week extension to
`file its Reply to Patent Owner’s Response.
`1. Request for Authorization to File a Motion to Withdraw Lead
`Counsel
`In a July 14, 2016 e-mail to the Board, Petitioner requested
`authorization to file a motion to withdraw lead counsel. See 37 C.F.R. §
`42.10(e). In the e-mail, Petitioner indicated that Steven L. Park, who is
`currently listed as lead counsel for Petitioner, is no longer with the law firm
`of Paul Hastings LLP. Petitioner stated that it will substitute Naveen Modi
`as lead counsel for Mr. Park, and will appoint another back-up counsel.
`During the call, Patent Owner confirmed that it does not oppose the request.
`Accordingly, Petitioner’s request is granted.
`2. Request for an Extension of Time
`Pursuant to the current Scheduling Order, Petitioner’s Reply is due on
`July 20, 2016. Paper 10, 6.
`Petitioner requested a two-week extension, until August 3, 2016, to
`file its Reply. During the call, Petitioner explained that its reasons for the
`request include (1) the departure of its lead counsel Mr. Park on July 1,
`2016, (2) “expert witness availability issues,” (3) Mr. Modi’s involvement in
`other matters – including other cases before the Board, and (4) the lack of
`any impact of an extension on the remaining dates in the Scheduling Order.
`Patent Owner opposes the request, noting during the call that
`Petitioner has had almost three months to prepare its Reply, and that the
`
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`Case IPR2015-01524
`Patent 6,366,130
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`departure of Mr. Park and Mr. Modi’s schedule do not justify a two-week
`extension considering the size of the law firm of Paul Hastings LLP.
`Under 37 C.F.R. § 42.5(c)(2), “[a] request for an extension of time
`must be supported by a showing of good cause.” We agree with Patent
`Owner that Petitioner’s reasons behind its request for an extension of time
`do not constitute a showing of good cause for a two-week extension. We,
`however, find that Petitioner has shown good cause to justify a five-day
`extension of time, especially considering the parties agree that an extension
`will not impact any remaining dates in the Scheduling Order.
`Accordingly, Petitioner’s request for an extension of time is granted-
`in-part.
`For the reasons given, it is hereby
`ORDERED that Petitioner’s request for authorization to file a motion
`to withdraw lead counsel is granted;
`FURTHER ORDERED that Petitioner’s request for an extension of
`time to file its Reply is granted-in-part; and
`FURTHER ORDERED that Petitioner’s Reply to Patent Owner’s
`Response is due on July 25, 2016.
`
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`Case IPR2015-01524
`Patent 6,366,130
`
`PETITIONER:
`Naveen Modi
`Paul Hastings LLP
`naveenmodi@paulhastings.com
`
`PATENT OWNER:
`Clifford H. Kraft
`clifflaw@att.net
`
`Joseph N. Hosteny
`NIRO, HALLER & NIRO
`hosteny@hosteny.com
`
`
`
`
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