`571.272.7822
`
`
`Paper 14
`
` Filed: December 13, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00753 Patent 7,752,649 B1
`Case IPR2016-00754 Patent 8,559,635 B1
` Case IPR2016-00755 Patent 8,191,091 B11
` _____________
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the identified 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.
`
`
`
`
`Cases IPR2016-00753, IPR2016-00754, IPR2016-00755
`Patents 7,752,649 B1; 8,559,635 B1; 8,191,091 B1
`
`
`A conference call in the above proceeding was held on December 12,
`2016 between Thomas J. Scott and April E. Weisbruch for Patent Owner,
`Joel R. Merkin and Marcus E. Sernel for Petitioner, and Judges Braden,
`Easthom, and Ward. The call was initiated by Patent Owner to confer about
`its intent to file a motion to amend claims pursuant to 37 C.F.R. § 42.121.
`The panel provided guidance regarding the statute and rules governing
`motions to amend claims and Patent Owner’s burden as the movant. See
`IPR2016-00753, Paper 10, 5–6.
`The panel also heard from Petitioner regarding a Protective Order
`issued by a District Court that binds the parties and limits the parties’
`counsel actions in prosecution matters. Petitioner indicated that it did not
`currently have a motion to file in relation to the matter and was not, at this
`time, seeking authorization to file a motion. We encouraged the parties to
`confer with each other on the matter and subsequently request a conference
`with the Board should it be required.
`It is
`ORDERED that Patent Owner should note the guidance provided by
`the panel in filing its motion to amend claims under 37 C.F.R. § 41.121; and
`FURTHER ORDERED that Patent Owner has satisfied its
`requirement to confer with the Board pursuant to 37 C.F.R. § 42.121(a).
`
`
`
`2
`
`
`
`Cases IPR2016-00753, IPR2016-00754, IPR2016-00755
`Patents 7,752,649 B1; 8,559,635 B1; 8,191,091 B1
`
`
`PETITIONER:
`
`Marcus Sernel
`Joel Merkin
`KIRKLAND & ELLIS LLP
`Marc.sernel@kirkland.com
`Joel.merkin@kirkland.com
`
`PATENT OWNER:
`
`Douglas Kline
`Jennifer Albert
`Stephen Schreiner
`Krupa K. Parikh
`April E. Weisbruch
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`kparikh@goodwinlaw.com
`aweisbruch@goodwinlaw.com
`
`Thomas Scott, Jr.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`
`
`
`3
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