`Tel: 571-272-7822
`
`Paper 9
`Entered: March 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2015-01898 (Patent 8,434,020 B2)1
` Case IPR2015-01899 (Patent 8,713,476 B2)
`____________
`
`
`
`Before JAMESON LEE, DAVID C. MCKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are identical in both cases. We exercise
`our discretion to issue one order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2015-01898 (Patent 8,434,020 B2)
`IPR2015-01899 (Patent 8,713,476 B2)
`
`
`An initial conference call was originally scheduled in this case. The
`parties requested that it be re-scheduled, but, after considering the request,
`the panel has decided that an initial conference call is not necessary at this
`time. If the parties have any matter they wish to discuss with the panel, they
`may contact the trial paralegals to request a call.
`We note the following guidance given to the parties during an initial
`conference call in in a related co-pending inter partes review, LG
`Electronics, Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2015-01983
`(PTAB Mar. 18, 2016) (Paper 10):
`The parties should not to use the Motion to Exclude for any purpose
`other than to raise admissibility issues under the Federal Rules
`of Evidence. If an issue arises with regard to a paper being out
`of proper scope, e.g., belatedly raising new issues or belatedly
`submitting new evidence, the parties shall contact the Board in
`a timely manner to raise the matter.
`Supplemental evidence is not the same as supplemental information,
`and that the rules do not contemplate more than one cycle of
`objection to evidence and subsequent supplemental evidence to
`cure the objection.
`A motion for Observation on Cross-Examination should not be
`argumentative and that the entry for each identified item is
`limited to one short paragraph. It does not mean that arguments
`can be presented so long as they are less than one short
`paragraph in length. Also, circumventing the length
`requirement by use of footnote is inappropriate.
`
`
`
`2
`
`
`
`IPR2015-01898 (Patent 8,434,020 B2)
`IPR2015-01899 (Patent 8,713,476 B2)
`
`
`Consistent with the guidance given the parties in IPR2015-01983, if
`Patent Owner decides to file a motion to amend claims, it must request a
`conference call with the Board more than two weeks prior to the due date of
`such a motion, so that a conference call may be arranged at least two weeks
`prior to the due date of such a motion and so that the parties will have
`sufficient time to consider any guidance we may provide. With respect to
`any feature Patent Owner proposes to add by way of a substitute claim,
`Patent Owner should be aware of the duty of candor requirement under 37
`C.F.R. § 42.11. The initial focus should be on the individual features
`proposed to be added, and secondary references making up deficiencies of a
`primary reference are pertinent. We direct attention of the parties to
`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040, slip op. at 3
`(PTAB July 15, 2015) (Paper 42) (Representative), which states:
`Thus, when considering its duty of candor and good faith under
`37 C.F.R. § 42.11 in connection with a proposed amendment,
`Patent Owner should place initial emphasis on each added
`limitation. Information about the added limitation can still be
`material even if it does not include all of the rest of the claim
`limitations. See VMWare, Inc. v. Clouding Corp., Case
`IPR2014-01292, slip op. at 2 (PTAB Apr. 7, 2015) (Paper 23)
`(“With respect to the duty of candor under 37 C.F.R. § 42.11,
`counsel for Patent Owner acknowledged a duty for Patent Owner
`to disclose not just the closest primary reference, but also closest
`secondary reference(s) the teachings of which sufficiently
`complement that of the closest primary reference to be
`material.”).
`
`3
`
`
`
`
`
`IPR2015-01898 (Patent 8,434,020 B2)
`IPR2015-01899 (Patent 8,713,476 B2)
`
`For PETITIONER:
`
`J. Steven Baughman
`Megan Raymond
`Nicole Jantzi
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`megan.raymond@ropesgray.com
`Nicole.jantzi@ropesgray.com
`
`
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Holly Atkinson
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`
`
`4
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