Trials@uspto.gov
`571-272-7822
`
`Paper No. 6
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Mercedes-Benz USA, LLC,
`Petitioner,
`
`v.
`
`Yechezkal Evan Spero,
`Patent Owner.
`____________
`
`Case IPR2023-01034
`Patent 11,208,029
`____________
`
`Mailed: July 24, 2023
`
`Before CARRIE JOHNSON, Trial Paralegal
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for inter partes review in the above proceeding has been
`accorded the filing date of June 8, 2023.
`
`

`

`Case IPR2023-01034
`Patent 11,208,029
`A review of the petition identified the following defect(s):
`Pursuant to 37 C.F.R. § 42.63(d)(2)(i), each page must be
`uniquely numbered in sequence. Please enter corrected
`exhibits with page numbering.
`Petitioner must correct the defect(s) within FIVE BUSINESS DAYS
`from this notice. Failure to correct the defect(s) may result in an order to
`show cause as to why the Board should institute the trial. No substantive
`changes (e.g., new grounds) may be made to the petition.
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition. Mandatory notices include identifying any other judicial or
`administrative matter that would affect, or be affected by, a decision in the
`proceeding. 37 C.F.R. § 42.8(b)(2). Such administrative matters include
`requests for certificates of correction.
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`
`
`
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`Case IPR2023-01034
`Patent 11,208,029
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in
`Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the
`Board Web site at http://www.uspto.gov/PTAB. To file documents, users
`must register with PTAB E2E. Information regarding how to register with
`and use PTAB E2E is available at the Board Web site.
`The parties are directed to contact the Board within a month of this
`Order if there is a need to discuss proposed changes to this Scheduling Order
`or proposed motions that have not been authorized in this Order or other
`prior Order or Notice. See Consolidated Trial Practice Guide (“Trial
`Practice Guide”)[1] at 9–10, 65 (guidance in preparing for a conference call);
`see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). A request for an initial
`conference call shall include a list of proposed motions, if any.
`The parties may request additional conference calls as needed. Any
`email requesting a conference call with the Board should: (a) copy all
`parties, (b) indicate generally the relief being requested or the subject matter
`of the conference call, (c) include multiple times when all parties are
`available, (d) state whether the opposing party opposes any relief requested,
`and (e) if opposed, either certify that the parties have met and conferred
`telephonically or in person in an attempt to reach agreement, or explain why
`such meet and confer did not occur. The email may not contain substantive
`
`
`[1] Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`
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`Case IPR2023-01034
`Patent 11,208,029
`argument and, unless otherwise authorized, may not include attachments.
`See Trial Practice Guide at 9–10. If practicable, in order to ensure emails
`are consistent with the above, the panel recommends that the parties send a
`single, joint email that includes items (a)–(e).
`If there are any questions pertaining to this notice, please contact
`Carrie Johnson at 571-272-5169 or the Patent Trial and Appeal Board at
`571-272-7822.
`
`PETITIONER:
`
`Celine Crowson
`Joe Raffetto
`Scott Hughes
`Ryan Stephenson
`HOGAN LOVELLS US LLP
`celine.crowson@hoganlovells.com
`joseph.raffetto@hoganlovells.com
`ryan.stephenson@hoganlovells.com
`scott.hughes@hoganlovells.com
`
`
`PATENT OWNER:
`
`Brooks Kushman
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Email: docketing@brookskushman.com
`
` kdilucia@brookskushman.com
`
`
`
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`Case IPR2023-01034
`Patent 11,208,029
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION
`(ADR)
`The Patent Trial and Appeal Board (PTAB) strongly encourages
`
`parties who are considering settlement to consider alternative dispute
`resolution as a means of settling the issues that may be raised in an AIA trial
`proceeding. Many AIA trials are settled prior to a Final Written Decision.
`Those considering settlement may wish to consider alternative dispute
`resolution techniques early in a proceeding to produce a quicker, mutually
`agreeable resolution of a dispute or to at least narrow the scope of matters in
`dispute. Alternative dispute resolution has the potential to save parties time
`and money.
`
`Many non-profit organizations, both inside and outside the intellectual
`property field, offer alternative dispute resolution services. Listed below are
`the names and addresses of several such organizations. The listings are
`provided for the convenience of parties involved in cases before the PTAB;
`the PTAB does not sponsor or endorse any particular organization’s
`alternative dispute resolution services. In addition, consideration may be
`given to utilizing independent alternative dispute resolution firms. Such
`firms may be located through a standard keyword Internet search.
`
`
`CPR
`INSTITUTE
`FOR DISPUTE
`RESOLUTION
`
`AMERICAN
`INTELLECTUAL
`PROPERTY
`LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`Telephone:
`(212) 949-6490
`Fax: (212) 949-8859
`
`575 Lexington Ave
`New York, NY 10022
`
`www.aipla.org
`
`AMERICAN
`ARBITRATIO
`N
`ASSOCIATIO
`N (AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUA
`L PROPERTY
`ORGANIZATI
`ON (WIPO)
`Telephone:
`41 22 338 9111
`Fax: 41 22 733 5428
`34, chemin des
`Colombettes
`CH-1211 Geneva 20,
`Switzerland
`www.wipo.int
`
`AMERICAN
`BAR
`ASSOCIATION
`(ABA)
`
`Telephone :
`(202) 662-1000
`N/A
`1050 Connecticut Ave,
`NW
`Washington D.C. 20036
`
`www.americanbar.org
`
`www.cpradr.org
`
`If parties to an AIA trial proceeding consider using alternative dispute
`
`resolution, the PTAB would like to know whether the parties ultimately
`decided to engage in alternative dispute resolution and the reasons why or
`why not. If the parties actually engage in alternative dispute resolution, the
`PTAB would be interested to learn what mechanism (e.g., arbitration,
`mediation, etc.) was used and the general result. Such a statement from the
`
`
`
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`Case IPR2023-01034
`Patent 11,208,029
`parties is not required but would be helpful to the PTAB in assessing the
`value of alternative dispute resolution to parties involved in AIA trial
`proceedings. To report an experience with ADR, please forward a summary
`of
`the
`particulars
`to
`the
`following
`email
`address:
`PTAB_ADR_Comments@uspto.gov
`
`
`
`
`
`6
`
`