Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 16
` Entered: August 1, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00421
`Patent 7,489,786 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`On July 29, 2016, an initial conference call was held. The participants
`
`
`
`
`
`were respective counsel for the parties and Judges Lee, Giannetti, and Bui.
`
`Only Patent Owner filed a list of proposed motions for discussion. Paper 15.
`
`
`Tel: 571-272-7822
`
`Paper 16
` Entered: August 1, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOYOTA MOTOR CORPORATION,
`Petitioner
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner
`____________
`
`Case IPR2016-00421
`Patent 7,489,786 B2
`____________
`
`
`
`Before JAMESON LEE, THOMAS L. GIANNETTI, and HUNG H. BUI,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`
`On July 29, 2016, an initial conference call was held. The participants
`
`
`
`
`
`were respective counsel for the parties and Judges Lee, Giannetti, and Bui.
`
`Only Patent Owner filed a list of proposed motions for discussion. Paper 15.
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`Oral Hearing Date
`
`
`
`Oral hearing is currently scheduled for February 9, 2017. Paper 14.
`
`Counsel for Patent Owner informed us that the trial in related district court
`
`action is scheduled to begin a few days prior to February 9, 2017, and thus
`
`Patent Owner’s lead counsel would not be available on February 9, 2017, for
`
`the scheduled hearing at the Board. Patent Owner, however, proposed no
`
`alternative date for oral hearing. Upon inquiry from the Board, counsel for
`
`Patent Owner stated that he could not commit to an alternative date, because
`
`he did not know how the trial schedule in district court might develop.
`
`Counsel for Petitioner informed us that there are multiple related actions in
`
`the district court and each defendant may be entitled to a separate trial.
`
`
`
`Given that Patent Owner has proposed no alternative date, the request
`
`to reset oral hearing date is denied. Patent Owner may renew its request
`
`within 30 days of this communication. After that time, we will not consider
`
`a request to change in the oral hearing date due to a conflict with district
`
`court trial. Any proposed alternative date should be one Patent Owner can
`
`commit to and which is not too distant from February 9, 2017. Patent
`
`Owner also should consider having its backup counsel conduct the oral
`
`hearing at the Board if its lead counsel cannot be available at any time near
`
`February 9, 2017. Once reset, we are unlikely to move the oral hearing date
`
`again because of changes in the scheduling of trial in related district court
`
` 2
`
`
`
`action(s).
`
`
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`Other Scheduling Matters
`
`
`
`The parties do not need our authorization to stipulate to different Due
`
`Dates 1–5 so long as none extends beyond Due Date 6. The stipulation,
`
`however, must be filed prior to the first Due Date changed.
`
`Patent Owner withdrew its request for discovery, an item mentioned
`
`Discovery
`
`in its proposed list of motions.
`
`Motion to Amend Claims
`
`
`
`Patent Owner indicated that it is contemplating the filing of a motion
`
`to amend claims, but that it is not ready to discuss which claims it intends to
`
`amend or what limitation it seeks to add to original patent claims. Under
`
`37 C.F.R. § 42.121, prior to the filing of a motion to amend claims, Patent
`
`Owner must initiate a conference call with the Board to “confer.” Because
`
`Patent Owner is not ready to discuss its motion at this time, this initial
`
`conference call does not satisfy the requirements of such a “to confer” call.
`
`Patent Owner is herein directed to make arrangements to have the “to
`
`confer” call conducted no later than two weeks prior to filing of its motion to
`
`amend claims.
`
`
`
`For the “to confer” call, Patent Owner should be prepared to discuss
`
`how its duty of candor under 37 C.F.R. § 42.11 would be satisfied. We
`
`direct attention of the parties to MasterImage 3D, Inc., IPR2015-00040, slip
`
`op. at 3 (PTAB July 15, 2015) (Paper 42) (precedential), which states:
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`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.”).
`
`
`
`We also direct the Patent Owner to inform Petitioner, two business
`
`days prior to the “to confer” call, how it proposes to amend each claim
`
`sought to be amended, so that Petitioner may come to the “to confer” call
`
`with any prior art reference it desires to discuss, limited to two in number for
`
`each substantive limitation added to the claims.
`
`Motions to Exclude
`
`
`
`The parties are on notice that the Motion to Exclude shall not be used
`
`for any purpose other than exclusion of evidence on admissibility grounds
`
`under the Federal Rules of Evidence. Issues improperly raised in a Motion
`
`to Exclude will not be considered and may cause the entirety of the Motion
`
`to Exclude to be dismissed including the parts addressing issues that are not
`
`improper. If any issue not pertaining to admissibility under the Federal
`
`Rules of Evidence arises, such as a reply exceeding the proper scope of a
`
`reply, the parties should promptly request a conference call with the Board.
`
` 4
`
`
`
`
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`
`Supplemental Evidence
`
`
`
`Supplemental evidence is not supplemental information. See
`
`37 C.F.R. § 42.64(b)(2); 37 C.F.R. § 42.123. There should be only one
`
`round of objections to evidence and subsequent service of supplemental
`
`evidence. No objections shall be made to supplemental evidence to trigger
`
`another round of supplemental evidence.
`
`Substitution of Lead and Backup Counsel
`
`Patent Owner in its list of proposed motions raised the issue of
`
`possible substitution of lead and backup counsel. In that regard, the parties
`
`do not need the Board’s prior authorization to re-designate a new lead
`
`counsel or to designate additional backup counsel. However, no counsel
`
`may withdraw from representation without prior authorization from the
`
`Board. 37 C.F.R. § 42.10(e).
`
`
`
`
`
`
`
`It is
`
`ORDER
`
`ORDERED that Due Dates 6 and 7 as set in the Scheduling Order
`
`(Paper 14) remain unchanged.
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`IPR2016-00421
`Patent 7,489,786 B2
`
`PETITIONER:
`
`William H. Mandir
`John F. Rabena
`Brian K. Shelton
`Sughrue Mion PLLC
`wmandir@sughrue.com
`jrabena@sughrue.com
`bshelton@sughrue.com
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Brown Rudnick LLP
`plambrianakos@brownrudnick.com
`
` 6
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
