`
`Trials@uspto.gov
`Entered: April 22, 2020
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LENOVO HOLDING COMPANY, INC., LENOVO (UNITED STATES)
`INC., AND MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`_______________
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)1
`_______________
`
`
`Before JAMES A. WORTH, AMBER L. HAGY, and SHARON FENICK,
`Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`Patent Owner filed, on behalf of both Patent Owner and Petitioner, a
`Notice of Joint Stipulation to modify certain due dates in each of the above-
`
`
`1 This Order applies to each of the listed cases. The parties are not
`authorized to use this caption for subsequent papers.
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`identified proceedings (IPR2019-01278, Paper 17; IPR2019-01279, Paper
`16) (“Notices”)).
`In the Scheduling Order for each of the proceedings, we indicated that
`“[t]he parties may stipulate different dates for . . . the portion of DUE DATE
`3 related to Patent Owner’s sur-reply” but that “[t]he parties may not
`stipulate to a different date for the portion of DUE DATE 3 related to Patent
`Owner’s reply to an opposition to amend (or Patent Owner’s revised motion
`to amend) without prior authorization from the Board.” IPR2019-01278,
`Paper 9, 6; IPR2019-01279, Paper 8, 6. The Notices purport to stipulate to a
`change in the date for the portion of DUE DATE 3 related to Patent Owner’s
`reply to an opposition to amend (or Patent Owner’s revised motion to
`amend.) IPR2019-01278, Paper 17, 2–3; IPR2019-01279, Paper 16, 2–3.
`However, as no authorization to move the due date for Patent Owner’s reply
`to an opposition to amend (or Patent Owner’s revised motion to amend) has
`been requested or granted in either proceeding, this due date cannot be
`changed by stipulation in either proceeding.
`We note that the filed Notice of Joint Stipulation in IPR2019-01278
`moved DUE DATE 1 to May 6, 2020. IPR2019-01278, Paper 17, 2–3.
`Because this order issues on the original DUE DATE 1 in that proceeding,
`we move DUE DATE 1 as per the Parties’ apparent agreement. We further
`note that the filed Notice of Joint Stipulation in IPR2019-01279 moved DUE
`DATE 1 to April 27, 2020. IPR2019-01278, Paper 17, 2–3. Because this
`order issues after the original DUE DATE 1 in that proceeding, we move
`DUE DATE 1 as per the Parties’ apparent agreement. However, with
`respect to the balance of the stipulated changes to the Scheduling Orders in
`IPR2019-01278 and IPR2019-01279, we reset the due dates to the original
`
`2
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`due dates from the respective Scheduling Order in each case, as it is unclear
`to what extent the agreement between the parties relied on the change to the
`due date for Patent Owner’s reply to an opposition to amend (or Patent
`Owner’s revised motion to amend). IPR2019-01278, Paper 9, 6; IPR2019-
`01279, Paper 8, 6.
`The parties are directed to meet and confer and to file, in each case,
`within seven days of this order, a revised joint stipulation on due dates
`pursuant to the requirements of the Scheduling Order issued in each case.
`“In stipulating to move any due dates in the scheduling order, the parties
`must be cognizant that the Board requires approximately 4 weeks after the
`filing of an opposition to the MTA (or the due date for the opposition, if
`none is filed) for the Board to issue its preliminary guidance, if requested by
`patent owner.” Notice Regarding a New Pilot Program Concerning Motion
`to Amend Practice and Procedures in Trial Proceedings under the America
`Invents Act before the Patent Trial and Appeal Board, 84 Fed. Reg. 9497,
`9500 (Mar. 15, 2019); see IPR2019-01278, Paper 9, 6; IPR2019-01279,
`Paper 8, 6. In order to move the due date for the Patent Owner’s reply to an
`opposition to amend (or Patent Owner’s revised motion to amend) in either
`case, we reiterate that authorization from the Board would be required.
`
`It is
`ORDERED that the due dates for the filings by the parties in
`IPR2019-01278 are the due dates set forth in the Scheduling Order (Paper
`9)in that proceeding, with the exception of DUE DATE 1, which is changed
`to May 6, 2020;
`FURTHER ORDERED that the due dates for the filings by the parties
`in IPR2019-01279 are the due dates as set forth in the Scheduling Order
`
`3
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`(Paper 8) in that proceeding, with the exception of DUE DATE 1, which is
`changed to April 27, 2020;
`FURTHER ORDERED that the parties meet and confer to determine
`any joint stipulation to modify due dates in conformance with the
`Scheduling Order in each of IPR2019-01278 and IPR2019-01279, and file
`any notice of the stipulation, in each proceeding, specifically identifying the
`proposed changed due dates, within seven days of this order.
`
`
`
`
`4
`
`
`
`IPR2019-01278 (Patent 8,020,083 B1)
`IPR2019-01279 (Patent 8,510,407 B1)
`
`PETITIONER:
`John C. Alemanni
`Matthew J. Meyer
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`mmeyer@kilpatricktownsend.com
`
`PATENT OWNER:
`Lewis E. Hudnell, III
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`
`
`5
`
`