`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GEMOLOGICAL INSTITUTE OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`DIAMOND GRADING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00455
`Patent RE44,963
`____________
`
`Mailed: January 27, 2016.
`
`Before Paul Sullivan, Trial Paralegal
`
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for inter partes review filed in the above proceeding has
`been accorded the filing date of January 11, 2016.
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`
`
`
`Case IPR2016-00455
`Patent No. RE44,963
`
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition.
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`Patent Review Processing System (PRPS), accessible from the Board Web
`site at http://www.uspto.gov/PTAB. To file documents, users must first
`obtain a user ID and password by registering with PRPS. Information
`regarding how to register with and use PRPS is available at the Board Web
`site.
`
`
`
`2
`
`
`
`Case IPR2016-00455
`Patent No. RE44,963
`
`
`If there are any questions pertaining to this notice, please contact Paul
`Sullivan at 571-272-0338 or the Patent Trial and Appeal Board at 571-272-
`7822.
`
`PETITIONER:
`
`Christopher W. Kennerly
`Paul Hastings LLP
`1117 S. California Avenue
`Palo Alto, CA 94304
`
`Naveen Modi
`Timothy P. Cremen
`Paul Hastings LLP
`875 15th Street, N.W.
`Washington, DC 20005
`
`chriskennerly@paulhastings.com
`naveenmodi@paulhastings.com
`timothycremen@paulhastings.com
`
`PATENT OWNER:
`
`Blakely Sokoloff Taylor & Zafman
`1279 Oakmead Parkway
`Sunnyvale, CA 94085-4040
`
`McDole & Williams, PC
`1700 Pacific Avenue, Suite 2750
`Dallas, TX 75201
`
`
`
`3
`
`
`
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION (ADR)
`
`The Patent Trial and Appeal Board (PTAB) strongly encourages parties who are considering
`
`settlement to consider alternative dispute resolution as a means of settling the issues that may be raised
`in an AIA trial proceeding. Many AIA trials are settled prior to a Final Written Decision. Those
`considering settlement may wish to consider alternative dispute resolution techniques early in a
`proceeding to produce a quicker, mutually agreeable resolution of a dispute or to at least narrow the
`scope of matters in dispute. Alternative dispute resolution has the potential to save parties time and
`money.
`
`Many non-profit organizations, both inside and outside the intellectual property field, offer
`
`alternative dispute resolution services. Listed below are the names and addresses of several such
`organizations. The listings are provided for the convenience of parties involved in cases before the
`PTAB; the PTAB does not sponsor or endorse any particular organization’s alternative dispute resolution
`services. In addition, consideration may be given to utilizing independent alternative dispute resolution
`firms. Such firms may be located through a standard keyword Internet search.
`
`
`
`
`
`CPR INSTITUTE
`FOR DISPUTE
`RESOLUTION
`
`Telephone:
`(212) 949-6490
`Fax: (212) 949-8859
`
`575 Lexington Ave
`New York, NY 10022
`
`AMERICAN
`INTELLECTUAL
`PROPERTY LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`www.cpradr.org
`
`www.aipla.org
`
`AMERICAN
`ARBITRATION
`ASSOCIATION
`(AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUAL
`PROPERTY
`ORGANIZATION
`(WIPO)
`Telephone:
`41 22 338 9111
`Fax: 41 22 733 5428
`34, chemin des
`Colombettes
`CH-1211 Geneva 20,
`Switzerland
`www.wipo.int
`
`AMERICAN BAR
`ASSOCIATION
`(ABA)
`
`Telephone :
`(202) 662-1000
`N/A
`1050 Connecticut Ave,
`NW
`Washington D.C. 20036
`
`www.americanbar.org
`
`
`
`If parties to an AIA trial proceeding consider using alternative dispute resolution, the PTAB
`would like to know whether the parties ultimately decided to engage in alternative dispute resolution
`and the reasons why or why not. If the parties actually engage in alternative dispute resolution, the
`PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the
`general result. Such a statement from the parties is not required but would be helpful to the PTAB in
`assessing the value of alternative dispute resolution to parties involved in AIA trial proceedings. To
`report an experience with ADR, please forward a summary of the particulars to the following email
`address: PTAB_ADR_Comments@uspto.gov