`571.272.7822
`
`
`
`
`
`Paper No. 10
`Entered: April 20, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2015-01984
`Patent 8,434,020 B2
`_______________
`
`
`
`Before JAMESON LEE, DAVID C. McKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-01984
`Patent 8,434,020 B2
`
`
`
`An initial telephone conference call was held on April 13, 2016. The
`
`participants were respective counsel for the parties and Judges Lee,
`
`McKone, and Cherry. Neither party identified any motion it presently
`
`contemplates filing. Neither party proposed any change to the due dates set
`
`in the Scheduling Order entered March 17, 2016 (Paper 8). The parties
`
`provided a brief update on the status of the related lawsuit pending in the
`
`Eastern District of Texas.
`
`Although not discussed on the call, we want to provide the parties
`
`with certain guidance in this case. The parties are directed 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.
`
`The parties are reminded that 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.
`
`If Patent Owner decides to file a motion to amend claims, it must
`
`request a conference call with the Board at least two weeks prior to the due
`
`date of such a motion, so that the parties will have sufficient time to consider
`
`any guidance we may provide. With respect to any feature the 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 that
`
`secondary references making up deficiencies of a primary reference are
`
`2
`
`
`
`
`
`IPR2015-01984
`Patent 8,434,020 B2
`
`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.”).
`
`It is
`
`ORDER
`
`ORDERED that a motion to exclude shall be used only to address
`
`
`
`
`
`admissibility issues under the Federal Rules of Evidence; and
`
`FURTHER ORDERED that any conference call to discuss a motion to
`
`amend claims by the Patent Owner shall take place at least two weeks prior
`
`to the due date of such a motion;
`
`FURTHER ORDERED that for any “to confer” call with respect to a
`
`motion to amend claims, Patent Owner shall be prepared to indicate how it
`
`understands the duty of candor under 37 C.F.R. § 42.11 insofar as secondary
`
`or complementary prior art references are concerned; and
`
`FURTHER ORDERED that all due dates set in the Scheduling Order
`
`entered March 17, 2016 (Paper 8) remain unchanged at this time.
`
`
`
`3
`
`
`
`
`
`
`
`IPR2015-01984
`Patent 8,434,020 B2
`
`For PETITIONER:
`
`Herbert Finn
`Richard Harris
`Eric Maiers
`Ashkon Cyrus
`LG-CoreWireless-IPR@gtlaw.com
`harrisr@gtlaw.com
`maierse@gtlaw.com
`cyrusa@gtlaw.com
`
`
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Holly Atkinson
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`
`
`4
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