`571-272-7822
`
`Paper 24
`Entered: November 16, 2021
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION,1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, which were granted.
`2 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`Judges Droesch, Parvis, and Boudreau held a conference call on
`November 15, 2021, with counsel for the parties. In emails to the Board on
`November 10, 2021, counsel for Patent Owner indicated that Patent Owner
`intends to file motions to amend the claims in each of the proceedings listed
`in the caption, and requested a conference to comply with the requirements
`of 37 C.F.R. § 42.121(a). The panel reviewed with the parties the applicable
`guidance and rules relating to filing a motion to amend.
`We direct the parties to the Board’s order in Lectrosonics, Inc. v.
`Zaxcom, Inc., Case IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019)
`(precedential) and the Patent Trial and Appeal Board Consolidated Trial
`Practice Guide November 2019, which provide information and guidance on
`motions to amend. We also direct the parties to the 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).
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner has complied with the conference
`requirement of 37 C.F.R. § 42.121(a).
`
`
`
`
`
`2
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`PETITIONER:
`Peter Chassman
`Jonathan Detrixhe
`REED SMITH LLP
`pchassman@reedsmith.com
`jdetrixhe@reedsmith.com
`
`PATENT OWNER:
`
`Jay Kesan
`jay@jaykesan.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`
`
`3
`
`
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