`571.272.7822
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`Paper No. 10
`Entered: April 20, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`LG ELECTRONICS, INC.,
`Petitioner,
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`v.
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`CORE WIRELESS LICENSING S.A.R.L.,
`Patent Owner.
`_______________
`
`Case IPR2015-01985
`Patent 8,713,476 B2
`_______________
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`
`
`Before JAMESON LEE, DAVID C. McKONE, and
`KEVIN W. CHERRY, Administrative Patent Judges.
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`
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2015-01985
`Patent 8,713,476 B2
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`An initial telephone conference call was held on April 13, 2016. The
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`participants were respective counsel for the parties and Judges Lee,
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`McKone, and Cherry. Neither party identified any motion it presently
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`contemplates filing. Neither party proposed any change to the due dates set
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`in the Scheduling Order entered March 17, 2016 (Paper 8). The parties
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`provided a brief update on the status of the related lawsuit pending in the
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`Eastern District of Texas.
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`Although not discussed on the call, we want to provide the parties
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`with certain guidance in this case. The parties are directed not to use the
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`Motion to Exclude for any purpose other than to raise admissibility issues
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`under the Federal Rules of Evidence. If an issue arises with regard to a
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`paper being out of proper scope, e.g., belatedly raising new issues or
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`belatedly submitting new evidence, the parties shall contact the Board in a
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`timely manner to raise the matter.
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`The parties are reminded that supplemental evidence is not the same
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`as supplemental information, and that the rules do not contemplate more
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`than one cycle of objection to evidence and subsequent supplemental
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`evidence to cure the objection.
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`If Patent Owner decides to file a motion to amend claims, it must
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`request a conference call with the Board at least two weeks prior to the due
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`date of such a motion, so that the parties will have sufficient time to consider
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`any guidance we may provide. With respect to any feature the Patent Owner
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`proposes to add by way of a substitute claim, Patent Owner should be aware
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`of the duty of candor requirement under 37 C.F.R. § 42.11. The initial focus
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`should be on the individual features proposed to be added, and that
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`secondary references making up deficiencies of a primary reference are
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`IPR2015-01985
`Patent 8,713,476 B2
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`pertinent. We direct attention of the parties to MasterImage 3D, Inc. v.
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`RealD Inc., Case IPR2015-00040, slip op. at 3 (PTAB July 15, 2015) (Paper
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`42) (Representative), which states:
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`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.”).
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`It is
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`ORDER
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`ORDERED that a motion to exclude shall be used only to address
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`admissibility issues under the Federal Rules of Evidence; and
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`FURTHER ORDERED that any conference call to discuss a motion to
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`amend claims by the Patent Owner shall take place at least two weeks prior
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`to the due date of such a motion;
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`FURTHER ORDERED that for any “to confer” call with respect to a
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`motion to amend claims, Patent Owner shall be prepared to indicate how it
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`understands the duty of candor under 37 C.F.R. § 42.11 insofar as secondary
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`or complementary prior art references are concerned; and
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`FURTHER ORDERED that all due dates set in the Scheduling Order
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`entered March 17, 2016 (Paper 8) remain unchanged at this time.
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`IPR2015-01985
`Patent 8,713,476 B2
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`For PETITIONER:
`
`Herbert Finn
`Richard Harris
`Eric Maiers
`Ashkon Cyrus
`LG-CoreWireless-IPR@gtlaw.com
`harrisr@gtlaw.com
`maierse@gtlaw.com
`cyrusa@gtlaw.com
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`
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Holly Atkinson
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
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