Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 11
`Date: November 4, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00468
`Patent 10,512,027 B2
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.121(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 11
`Date: November 4, 2022
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`____________
`
`IPR2022-00468
`Patent 10,512,027 B2
`____________
`
`
`
`
`Before GEORGIANNA W. BRADEN, STEVEN M. AMUNDSON, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.121(a)
`
`
`
`
`
`
`
`IPR2022-00468
`Patent 10,512,027 B2
`
`
`I. INTRODUCTION
`An October 26, 2022, email from Patent Owner’s counsel to the
`Board requested a conference call in this proceeding to permit Patent Owner
`to satisfy the requirement in 37 C.F.R. § 42.121(a) to confer with the Board
`before filing a motion to amend. An October 31, 2022, email to the Board
`stated that “[b]oth parties are comfortable with the Board’s processes with
`respect to motions to amend and wish to dispense with a conference call”
`according to 37 C.F.R. § 42.121(a), as authorized by the Board.
`Nonetheless, we issue this Order to provide additional information and
`guidance regarding the proposed motion to amend in lieu of a conference
`call.
`
`II. DISCUSSION
`We understand that Patent Owner intends to file a motion to amend.
`Patent Owner has not yet indicated whether it intends in its motion to amend
`to elect the option under the MTA Pilot Program to receive preliminary
`guidance from the Board on the substance of any amended claims. 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 the patentability of any proposed
`
`
`1 The MTA Pilot Program has been extended until September 16, 2024 (or it
`may end sooner if replaced by a permanent program after notice-and-
`comment rulemaking). See https://www.federalregister.gov/public-
`inspection/2022-21472/extension-of-the-patent-trial-and-appeal-board-
`motion-to-amend-pilot-program.
`
`2
`
`
`
`IPR2022-00468
`Patent 10,512,027 B2
`
`substitute claims, 2 a motion to amend must still comply with several
`statutory and regulatory requirements, as discussed in Lectrosonics, Inc. v.
`Zaxcom, Inc., 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 propose only 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. 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.
`
`
`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).
`
`3
`
`
`
`IPR2022-00468
`Patent 10,512,027 B2
`
`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 carefully consult the MTA Pilot
`Program Notice for further details and guidance.
`As stated in the Scheduling Order (Paper 9), the parties may not
`stipulate to a different date for either (i) the portion of DUE DATE 2 related
`to Petitioner’s opposition to the motion to amend or (ii) the portion of 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 remind the parties of their duty of candor under 37 C.F.R.
`§ 42.11.
`
`
`
`
`4
`
`
`
`IPR2022-00468
`Patent 10,512,027 B2
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`PATENT OWNER:
`
`Peter C. Knops
`Jason Wejnert
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipc.com
`
`5
`
`
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