`571-272-7822
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` Paper 10
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` Entered: March 29, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIMFROST AS,
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`____________
`
`Case IPR2018-01178
`Case IPR2018-01179
`Patent 9,375,453 B2
`____________
`
`
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. §§ 42.5, 42.121(a)
`
`
`
`
`
`IPR2018-01178
`IPR2018-01179
`Patent 9,375,453 B2
`
`
`On March 29, 2019, a conference call was held among counsel for the
`parties and Judges Franklin, Hulse, and Schneider to discuss general
`guidance for motions to amend.
`We explained that the requirements for a motion to amend are set
`forth in 37 C.F.R. § 42.121. We referred the parties to that rule and to the
`Memorandum re: Guidance on Motions to Amend in view of Aqua Products
`(Nov. 21, 2017) (available at https://www.uspto.gov/sites/default/files/
`documents/guidance_on_motions_to_amend_11_2017.pdf).
`We also referred the parties to additional guidance on motions to
`amend discussed in the following cases: Lectrosonics, Inc. v Zaxcom, Inc.,
`Case IPR2018-01129, 01130 (PTAB February 25, 2019) (Paper 15)
`(precedential), and Amazon.com, Inc. v. Uniloc Luxembourg S.A., Case
`IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34) (precedential).
`Furthermore we explained, as set forth in 37 C.F.R. § 42.24, that
`Patent Owner’s motion to amend and Petitioner’s opposition are each
`limited to twenty-five pages. 37 C.F.R. §§ 42.24(a)(1)(vi), 42.24(b)(3).
`Patent Owner’s reply and Petitioner’s sur-reply are limited to twelve pages.
`Id. § 42.24(c)(3). Pursuant to the Scheduling Order, the papers are currently
`due on April 15, July 15, August 14, and September 16, 2019, respectively.
`Paper 8. If the parties wish to stipulate to different deadlines, the parties
`may do so. Id. at 1 (“The parties may stipulate to different dates for DUE
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6).”).
`
`1
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`
`
`IPR2018-01178
`IPR2018-01179
`Patent 9,375,453 B2
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the conference requirement under 37 C.F.R.
`§ 42.121(a) is hereby satisfied.
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`2
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`IPR2018-01178
`IPR2018-01179
`Patent 9,375,453 B2
`
`PETITIONER:
`
`James F. Harrington
`Michael I. Chakansky
`Ronald J. Baron
`John T. Gallagher
`HOFFMANN & BARON LLP
`jfhdocket@hbiplaw.com
`micdocket@hbiplaw.com
`rjbdocket@hbiplaw.com
`jtgdocket@hbiplaw.com
`
`PATENT OWNER:
`David A. Casimir, Ph. D
`J. Mitchell Jones, Ph. D
`CASIMIR JONES S.C.
`docketing@casimirjones.com
`dacasimir@casimirjones.com
`jmjones@casimirjones.com
`
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`3
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