throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: May 21, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LBT IP I LLC,
`Patent Owner.
`____________
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
` IPR2020-01193 (Patent 8,421,619 B2)1
`___________
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. §§ 42.5, 42.121(a)
`
`
`
`
`
`
`1 We exercise our discretion to issue a single Order, to be filed in each case.
`The parties are not authorized to use this caption for subsequent papers.
`
`
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`
`INTRODUCTION
`I.
`A conference call in the above proceedings was held on May 20,
`2021, between respective counsel for the parties and Judges Hudalla,
`McShane, and Dirba. The purpose of the call was to allow Patent Owner to
`satisfy the requirement under to 37 C.F.R. § 42.121(a) to confer with the
`panel prior to filing motions to amend. This Order reiterates the discussion
`with the parties on the call and provides additional information and guidance
`regarding any proposed motions to amend.
`II. DISCUSSION
`During the call, Patent Owner stated that it intended to file motions to
`amend in each case and, further, that it intended to elect the option under the
`MTA Pilot Program to receive preliminary guidance from the Board on the
`substance of any amended claims in its motions to amend. See 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 (Mar. 15, 2019) (“MTA
`Pilot Program Notice”).
`We remind the parties that, although Patent Owner does not bear the
`burden of persuasion to demonstrate patentability of the proposed substitute
`claims,2 a motion to amend must still comply with several statutory and
`regulatory requirements, as discussed in Lectrosonics, Inc. v. Zaxcom, Inc.,
`
`
`2 See Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017); Bosch
`Auto. Serv. Sols., LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (as amended
`Mar. 15, 2018)).
`
`2
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential). See
`35 U.S.C. § 316(d); 37 C.F.R. § 42.121. Patent Owner should follow the
`guidance provided in Lectrosonics and the Office’s November 2019
`Consolidated Trial Practice Guide to ensure that the motions to amend
`comply with all relevant statutory and regulatory requirements. 84 Fed.
`Reg. 64,280 (Nov. 21, 2019), available at https://www.uspto.gov/
`TrialPracticeGuideConsolidated. We also note that Patent Owner may only
`propose substitute claims, not amendments to original claims. Additionally,
`Patent Owner may propose only substitute claims for challenged claims, not
`unchallenged claims.
`Because this inter partes review was instituted after March 15, 2019,
`the Motion to Amend Pilot Program applies. The details of the Motion to
`Amend Pilot Program are set forth in the MTA Pilot Program Notice. See
`84 Fed. Reg. 9497, as noted above. Importantly, if Patent Owner elects to
`seek non-binding preliminary guidance from the Board on its motions to
`amend, an explicit request for preliminary guidance must be included in
`each motion to amend filed no later than DUE DATE 1. Patent Owner has
`several options for addressing the Board’s preliminary guidance and/or
`Petitioner’s opposition in each case, including filing a revised motion to
`amend. See id. at 9499–9502. We note that a request for preliminary
`guidance is not a prerequisite for filing a revised motion to amend, and
`Patent Owner may filed a revised motion to amend regardless of whether it
`requests preliminary guidance. See id. at 9501. Should Patent Owner file a
`revised motion to amend, the Board will issued a revised Scheduling Order
`
`3
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`to allow additional briefing. See id. The parties should carefully consult the
`MTA Pilot Program Notice for further details and guidance.
`As stated in the Scheduling Order for these cases, the parties may not
`stipulate to a different date for DUE DATE 2 related to Petitioner’s
`oppositions to the motions to amend, or for DUE DATE 3 related to Patent
`Owner’s replies to Petitioner’s oppositions to the motion to amend (or Patent
`Owner’s revised motions to amend), without prior authorization from the
`Board.
`Finally, the parties remain subject to a duty of candor under 37 C.F.R.
`§ 42.11. In particular, we remind Patent Owner that it has a duty to disclose
`information that is material to the patentability of any proposed substitute
`claims.
`
`
`4
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01190 (Patent 8,542,113 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`IPR2020-01193 (Patent 8,421,619 B2)
`
`FOR PETITIONER:
`
`Jennifer Bailey
`Adam Seitz
`Jocelyn Ram
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`jocelyn.ram@eriseip.com
`
`FOR PATENT OWNER:
`Mitchell Zajac
`BUTZEL LONG, PC
`zajac@butzel.com
`
`5
`
`

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