` Trials@uspto.gov
` Entered: April 24, 2018
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZIMMER BIOMET HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`FOUR MILE BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00052 (Patent 9,308,093 B2)
`Case IPR2018-00053 (Patent 9,283,080 B1)1
`____________
`
`
`Before JOSIAH C. COCKS, GEORGE R. HOSKINS, and FRANCES L.
`IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple
`proceedings.
`
`
`
`IPR2018-00052 (Patent 9,308,093 B2)
`IPR2018-00053 (Patent 9,283,080 B1)
`
`A. INTRODUCTION
`In emails to Board staff, the parties requested a conference call with
`the panel to (1) confer with the Board per 37 C.F.R. § 42.121(a) for the
`filing of Patent Owner’s motion to amend; and (2) discuss Petitioner’s
`request to expunge ’052 IPR Paper 9 and ’053 IPR Paper 9 from the record.
`As discussed below, the panel has determined that a conference call is not
`necessary at this time to resolve the issues raised in the parties’ emails.
`
`B. MOTION TO AMEND
`Patent Owner’s April 21, 2018 email to the Board informed the panel
`and Petitioner of Patent Owner’s intent to file a motion to amend. In this
`email, Patent Owner did not indicate that it had any specific questions
`regarding the filing of a motion to amend, but rather requested a call with the
`Board to satisfy the “conferring” requirement of 37 C.F.R. § 42.121(a). The
`panel is informed of Patent Owner’s intent to file a motion to amend and
`waives the “conferring” requirement of 37 C.F.R. § 42.121(a). Further, the
`panel directs the parties’ attention to the “Guidance on Motions to Amend in
`view of Aqua Products.”
`https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_t
`o_amend_11_2017.pdf
`To the extent that the parties have specific questions regarding Patent
`Owner’s motion to amend, the parties may contact the Board to schedule a
`
`
`
`2
`
`
`
`IPR2018-00052 (Patent 9,308,093 B2)
`IPR2018-00053 (Patent 9,283,080 B1)
`
`call. If requesting a conference call, the parties should provide at least three
`(3) afternoon ET times for dates when both parties are available.
`
`C. PATENT OWNER’S RESPONSE TO PETITIONER’S OBJECTIONS
`TO PATENT OWNER’S EXHIBITS
`Patent Owner has filed its Responses to Petitioner’s Objections to
`Patent Owner’s Exhibits (’052 IPR Paper 9 and ’053 IPR Paper 9).
`However, Patent Owner has not been authorized to file its responses to
`Petitioner’s objections submitted per 37 C.F.R. § 42.64(b)(2).
`We remind the parties that the Scheduling Order issued in this
`proceeding provides dates for the filing of motions to exclude, oppositions to
`these motions, and replies. For example, a party may file a motion to
`exclude by Due Date 4 and the responding party may file an opposition by
`Due Date 5. Paper 7 (Scheduling Order). At this time, Petitioner has filed
`objections, but has not filed a motion to exclude. Should Petitioner file a
`motion to exclude, Patent Owner will have an opportunity at that time to
`oppose Petitioner’s motion. Thus, in the interest of maintaining a clear
`
`
`
`3
`
`
`
`IPR2018-00052 (Patent 9,308,093 B2)
`IPR2018-00053 (Patent 9,283,080 B1)
`
`record, ’052 IPR Paper 9 and ’053 IPR Paper 9 will be expunged from the
`respective records.
`
`For the foregoing reasons, it is
`ORDERED that Paper 9 is expunged from the record in IPR2018-
`00052;
`ORDERED that Paper 9 is expunged from the record in IPR2018-
`00053; and
`FURTHER ORDERED that the “conferring” requirement per 37
`C.F.R. § 42.121(a) is waived.
`
`
`
`
`
`4
`
`
`
`IPR2018-00052 (Patent 9,308,093 B2)
`IPR2018-00053 (Patent 9,283,080 B1)
`
`PETITIONER:
`Naveen Modi
`Young Park
`Paromita Chatterjee
`PAUL HASTINGS, LLP
`naveenmodi@paulhastings.com
`youngpark@paulhastings.com
`mitachatterjee@paulhastings.com
`
`
`PATENT OWNER:
`
`Philip S. Lyren
`EAGLE IP LIMITED
`philip_lyren@yahoo.com
`
`
`
`5
`
`
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