`Tel: 571-272-7822
`Entered: June 3, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COALITION FOR AFFORDABLE DRUGS VIII, LLC,
`Petitioner,
`
`v.
`
`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA,
`Patent Owner.
`_____________
`
`
`
`
`
`Case IPR2015-01835 (Patent 8,618,135 B2)
`Case IPR2015-01836 (Patent 7,932,268 B2)1
`____________
`
`
`Before MICHAEL P. TIERNEY, LORA M. GREEN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`the listed proceedings, provided that such heading includes a footnote
`attesting that “the word-for-word identical paper is filed in each proceeding
`identified in the heading.”
`
`
`
`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`
`A conference call was held was held on Tuesday, May 24, 2016,
`
`among Gregory Gonsalves, counsel for Petitioner; Cynthia Lambert
`
`Hardman, William James, and Nicholas Mitrokostas, counsel for Patent
`
`Owner; and Administrative Patent Judges Green, Tierney, and Obermann.
`
`The purpose of the call was to discuss Patent Owner’s intention to file
`
`a motion to amend in the two proceedings, and thus meet its duty to confer
`
`as required by 37 C.F.R. § 42.121(a). Although Patent Owner did not have
`
`any specific questions during the call, we noted that it could schedule an
`
`additional call with the panel if any arose. In that regard, we point the
`
`parties’ attention to Idle Free Systems, Inc. v. Bergstrom, Inc., Case
`
`IPR2012–00027 (PTAB June 11, 2013) (Paper 26) (informative) and
`
`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015–00040 (PTAB
`
`July 15, 2015) (Paper 42) (precedential).
`
`
`
`
`
`Accordingly, it is:
`
`ORDERED that Patent Owner has met its duty to confer with the
`
`Board before filing a motion to amend, as required by 37 C.F.R. § 42.121(a).
`
`
`
`
`
`
`
`2
`
`
`
`IPR2015-01835 (Patent 8,618,135 B2)
`IPR2015-01836 (Patent 7,932,268 B2)
`
`For PETITIONER:
`
`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`Christopher Casieri
`chris@miplaw.com
`
`
`For PATENT OWNER:
`
`Williams James
`wjames@goodwinprocter.com
`
`Cynthia Hardman
`chardman@goodwinprocter.com
`
`
`
`
`3
`
`
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