Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: October 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`
`
`
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. §§ 42.5, 42.121(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Entered: October 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00459
`Patent 8,798,658 B2
`
`
`
`
`
`
`
`
`
`Before SHARON FENICK, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`FENICK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 U.S.C. §§ 42.5, 42.121(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`INTRODUCTION
`I.
`A conference call in the above proceeding was held on September 30,
`2022, between respective counsel for the parties and Judges Fenick,
`Amundson, and Belisle. The purpose of the call was to allow Patent Owner
`to satisfy the requirement under 37 C.F.R. § 42.121(a) to confer with the
`panel prior to filing a motion to amend. This Order reiterates the discussion
`with the parties on the call and provides additional information and guidance
`regarding any proposed motion to amend.
`II. DISCUSSION
`During the call, Patent Owner stated that it intended to file a motion to
`amend but did not yet indicate whether 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 motion 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. 9,497 (Mar. 15, 2019) (“MTA
`Pilot Program Notice”).1
`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.,
`
`
`1 The MTA Pilot Program has been extended until September 16, 2024. See
`https://www.federalregister.gov/public-inspection/2022-21472/extension-of-
`the-patent-trial-and-appeal-board-motion-to-amend-pilot-program.
`2 See Aqua Prods., 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
`
`
`
`
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential) (providing
`information and guidance regarding motions to amend). See 35 U.S.C.
`§ 316(d) (statutory requirements for a motion to amend); 37 C.F.R. § 42.121
`(regulatory requirements and burdens for a motion to amend). Patent Owner
`should follow the guidance provided in Lectrosonics and the Office’s
`November 2019 Consolidated Trial Practice Guide to ensure that the motion
`to amend complies 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.
`As we informed the parties during the call, 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. 9,497, as noted
`above. Importantly, if Patent Owner elects to seek non-binding preliminary
`guidance from the Board on its motion to amend, an explicit request for
`preliminary guidance must be included in the 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, including filing
`a revised motion to amend. See id. at 9,499–502. We note that a request for
`preliminary guidance is not a prerequisite for filing a revised motion to
`amend, and Patent Owner may file a revised motion to amend regardless of
`whether it requested preliminary guidance. See id. at 9,501. Should Patent
`Owner file a revised motion to amend, the Board will issue a revised
`Scheduling Order to allow additional briefing. See id. The parties should
`
`3
`
`
`
`
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`carefully consult the MTA Pilot Program Notice for further details and
`guidance.
`As stated in our Scheduling Order, the parties may not stipulate to a
`different date for DUE DATE 2 related to Petitioner’s opposition to the
`motion to amend, or for DUE DATE 3 related to Patent Owner’s reply to the
`opposition to the motion to amend (or Patent Owner’s revised motion to
`amend), without prior authorization from the Board. Paper 9, 8.
`Finally, we again remind the parties of their duty of candor pursuant
`to 37 C.F.R. § 42.11.
`
`
`4
`
`
`
`IPR2022-00459
`Patent 8,798,658 B2
`FOR PETITIONER:
`
`
`
`
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`PTAB@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`
`FOR PATENT OWNER:
`
`Chad C. Walters
`David Tobin
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`david.tobin@bakerbotts.com
`
`5
`
`
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