`
` Trials@uspto.gov
` 571-272-7822
` Entered: August 3, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
` IPR2021-00473 (Patent 10,589,320 B1)1
`____________
`
`
`
`Before SALLY C. MEDLEY, BRYAN F. MOORE, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. § 42.5
`
`
`
`
`
`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.
`
`
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`
`On July 20, 2021, the Board received an email from the parties where
`Petitioner requested leave under 37 CFR. § 42.8 to file a Joint Motion to
`Amend the Scheduling Order and an Amended Scheduling Order, which are
`documents that were filed in the related District Court litigation, GUI Global
`Prods, Ltd. d/b/a Gwee v. Apple, Inc., No. 4:20-cv-02652 (S.D. Tex.).
`Patent Owner did not oppose Petitioner’s request to file the Amended
`Scheduling Order, but objected to the filing of the Joint Motion to Amend
`the Scheduling Order. We requested that the parties provide briefing on the
`issues of whether Section 42.8 applies to the request, and whether the
`documents at issue are relevant to disputed issues. On July 28, 2021, the
`parties responded by email briefing.
`As to the issue of whether Section 42.8 applies to the documents for
`which filing is sought, Petitioner argues that the provision applies because
`“37 CFR § 42.8 mandates that the parties ‘[i]dentify any other judicial …
`matter that would affect, or be affected by, a decision in the proceeding,’ and
`directs the parties to file updated notices ‘within 21 days of a change of the
`information ….’” Patent Owner asserts that the provision does not apply
`because “[m]andatory notices under 37 CFR 42.8 require identification of
`real parties in interest (RPI), related matters, lead and back-up counsel, and
`service information.” Id.
`On the issue of the application of Section 42.8, we agree with Patent
`Owner that based on the facts of these cases, the rule is not applicable to the
`documents at issue. With regard to Petitioner’s argument that the provision
`“[i]dentify[ing] any other judicial … matter that would affect, or be affected
`by, a decision in the proceeding,” should apply, we do not agree because the
`
`2
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`language “a decision in the proceeding” refers to this proceeding and
`Petitioner is only required to identify the “judicial matter,” i.e., the
`identification of the related District Court litigation, which has already been
`provided. See Paper 1, 90.2
`However, in order to provide a more complete record of the filings
`and status of the District Court litigation, we grant Petitioner’s unopposed
`request to file the Amended Scheduling Order. We do not grant Petitioner’s
`request to file the Joint Motion to Amend the Scheduling Order because, as
`Patent Owner argues, it reflects only party arguments.
`
`Accordingly, it is:
`ORDERED that we grant Petitioner’s unopposed request to file the
`Amended Scheduling Order from the related District Court litigation; and
`FURTHER ORDERED that we deny Petitioner’s request to file the
`Joint Motion to Amend the Scheduling Order from the related District Court
`litigation.
`
`
`2 For purposes of expediency, we cite to information from Papers filed in
`IPR2021-00470. Patent Owner provided similar information in each of the
`above-identified proceedings.
`
`3
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`PETITIONER:
`W. Karl Renner
`Roberto J. Devoto
`Andrew Patrick
`Kim H. Leung
`Kenneth Wayne Darby Jr
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`patrick@fr.com
`leung@fr.com
`kdarby@fr.com
`
`
`PATENT OWNER:
`John J. Edmonds
`Stephen F. Schlather
`EDMONDS & SCHLATHER, PLLC
`pto-edmonds@ip-lit.com
`sschlather@ip-lit.com
`
`Tarek Fahmi
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
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