`Tel: 571-272-7822
`Entered: September 22, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC.,
`Petitioner,
`
`
`
`v.
`
`VoIP-PAL.COM, INC.,
`Patent Owner.
`
`
`
`Case IPR2017-01382
`Patent 8,542,815 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, JENNIFER MEYER CHAGNON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01382
`Patent 8,542,815 B2
`
`Petitioner filed Exhibit 1003, the Declaration of James Bress, with its
`Petition in this case. Exhibit 1003 comprises Mr. Bress’s declaration and
`1872 pages of Appendices labeled A through II. Petitioner does not provide
`any listing of these Appendices and their corresponding page numbers. In
`addition, certain of the Appendices appear to be redundant of other exhibits
`in this case. Compare, e.g., Ex. 1003, 242, with Ex. 1004, 1, and Ex. 1003,
`308, with Ex. 1009, 1. Mr. Bress’s declaration also appears to cite to the
`Appendices by their titles, rather than by Appendix label, exhibit page
`number, or any other means that would allow the panel to efficiently refer to
`the underlying material. See, e.g., Ex. 1003 ¶ 78 (referencing “Telcordia
`Technologies Special Report, SR-2275, Issue 4, October 2000 entitled
`‘Telcordia Notes on the Networks’, Section 3.7, ‘Dialing Procedures’, at
`pages 3-8 to 3-12, and Section 3.10 ‘International Direct Distance Dialing’,
`at pages 3-13 to 3-14.”).
`The format of Exhibit 1003 contravenes 37 C.F.R. § 42.63, which
`requires exhibits in an inter partes review to be filed and numbered
`separately. In addition, the current citation format of Mr. Bress’s declaration
`is impracticable and unwieldy. To ensure a clear record, Petitioner shall
`re-file Mr. Bress’s declaration separately from the accompanying materials,
`as explained in the Order below. To the extent a given Appendix cited in the
`declaration is not already part of the record, Petitioner shall separately file
`the Appendix with the next available exhibit number in the 1000 series.
`Petitioner shall not re-file Appendices that are already part of the record.
`Finally, Petitioner shall file a revised version of Mr. Bress’s declaration as
`Exhibit 1003 with pinpoint citations to the numbered exhibits in the record.
`
`
`2
`
`
`
`IPR2017-01382
`Patent 8,542,815 B2
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, within 10 calendar days of this Order, Petitioner
`shall re-file each Appendix to Exhibit 1003 that is not already part of the
`record as a separately numbered exhibit in the 1000 series;
`FURTHER ORDERED that Petitioner shall not re-file any Appendix
`to Exhibit 1003 that is already part of the record;
`FURTHER ORDERED that Petitioner shall re-file the Declaration of
`James Bress without any other accompanying materials as Exhibit 1003, and
`once Petitioner does so, the original Exhibit 1003 will be expunged; and
`FURTHER ORDERED that the re-filed version of the Declaration of
`James Bress shall be revised to include pinpoint citations to the numbered
`exhibits in the record; and
`FURTHER ORDERED that no other changes shall be made to the
`re-filed version of the Declaration of James Bress.
`
`
`
`3
`
`
`
`IPR2017-01382
`Patent 8,542,815 B2
`
`PETITIONER:
`
`Samir A. Bhavsar
`Brian D. Johnston
`Charles Yeh
`BAKER BOTTS L.L.P.
`samir.bhavsar@bakerbotts.com
`brian.johnston@bakerbotts.com
`charles.yeh@bakerbotts.com
`
`
`PATENT OWNER:
`
`Kerry Taylor
`John M. Carson
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`2kst@knobbe.com
`2jmc@knobbe.com
`
`4
`
`
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